paris cardin | Decision 2427600 – Pierre Cardin v. OSAKA GROUP

OPPOSITION No B 2 427 600

Pierre Cardin, 59, rue du Faubourg Saint-Honoré, 75008 Paris, France (opponent), represented by T Mark Conseils, 31, rue Tronchet, 75008 Paris, France (professional representative)

a g a i n s t

Osaka Group, Opp. Down Town Hotel, Murshid Bazar Deira, Dubai, United Arab Emirates (applicant), represented by Rapisardi Intellectual Property Limited, 2A Collier House 163/169 Brompton Road, London SW3 1PY, United Kingdom (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

Opposition No B 2 427 600 is partially upheld, namely for the following contested goods:

Class 7: Door closers, electric; door openers, electric.

Class 8: Flat irons, electric; irons (flat), electric.

Class 9: Sunglasses; eyeglasses or pince-nez; spectacle glasses; lenses (optical); sports (goggles for); goggle; eyeshades; anti-glare glasses; contact lenses; electrical heated clothing; electrical heated glove; electrical heated socks; electrical heated shoe; electrical heated waistcoat; batteries, electric, for vehicles; accumulators, electric, for vehicles or batteries, electric, for vehicles; anode batteries; starter cables for motors; electricity mains (material for) [wires, cables]; copper wire, insulated; batteries, electric; accumulators, electric; cables, electric; binoculars; eyeglass cords; cases (eyeglass); eyeglass cases; pince-nez cases; containers for contact lenses; software (computer) [recorded]; notebook computers; laptop computers; computers, laptop computers; peripheral devices (computer); programs (computer game).

Class 12: Luggage carriers for vehicles; seats (vehicle); safety belts for vehicle seats; vehicle wheels; covers (seat) for vehicles; bicycle; bicycle stands; bike bag; perambulator covers (fitted); golf carts; wheelbarrows; safety seats for children [for vehicles]; covers for baby carriages; shopping trolleys [carts (am)]; two-wheeled trolleys; wheelchairs; strollers; stroller covers [pushchairs]; trucks (luggage); goods handling carts; hand cars; carts; pushchairs; pushchair covers; pushchair hoods; casters for trolleys [vehicles] [carts (am)]; prams [baby carriages]; baby carriages; hoods for baby carriages; luggage trucks; pucker luggage barrow; tires, solid, for vehicle wheels; tires for vehicle wheels; cigar lighters for automobiles.

Class 18: Beach bags; travelling bags; bags (garment) for travel; travelling sets [leatherware]; garment bags for travel; pocket wallets; handbags; school satchels or school bags; satchels (school); vanity cases [not fitted]; suitcases; sling bags for carrying infants; backpacks rucksacks; trunks [luggage]; briefcases; shopping bags; umbrellas; card cases [notecases]; passport folder (made by leather); purses; key cases [leatherware]; attaché cases; wheeled shopping bags; bags (net) for shopping; travelling trunks; boxes of leather; bags for sports or sports (bags for); bags for climbers; tool bags of leather [empty]; bags for campers; pouches, of leather, for packaging; bags [envelopes, pouches] of leather, for packaging; boxes of leather board; file folder (made by leather); cheque folder (made by leather); leather mat.

Class 20: Easy chairs; massage tables; mattresses; bedsteads [wood]; mattresses (spring); shelves for filing-cabinets [furniture]; benches [furniture]; tv set frame; mattresses; armchairs; footstools; hangers (coat); washstands [furniture]; counters [tables]; flower-pot pedestals; dressing tables; plot table; furniture; furniture of metal; seats of metal; hairdressers' chairs; wood ribbon; screens [furniture]; bottle racks; umbrella stands; sofas; dinner wagons [furniture]; furniture shelves; writing desks; tea carts; cupboards; filing cabinets; cabinet work; desks [furniture]; furniture (school); cradles; bassinettes; cabinets (medicine); coat hangers; racks [furniture]; garment covers [storage] beds (hospital); chairs [seats]; infant walkers; high chairs for babies; chests of drawers; tea trolleys; book rests [furniture]; magazine racks; trolleys for computers [furniture]; trolleys [furniture]; desks; tables; seats; stools; furniture (office); office furniture; beds; floating containers, not of metal; baskets, not of metal; trays, not of metal; pallets, not of metal (loading); bread baskets (bakers); taps for casks [not of metal]; baskets (fishing); clips (cable and pipe) of plastics; cable or pipe clips of plastics; handles, not of metal (knife); benches (work); keyboards for hanging keys; tables of metal; stairs (mobile boarding), not of metal, for passengers; ladders of wood or plastics; cork bands; mats, removable, for sinks; playpens for babies; bamboo arts and crafts; bamboo basket; bamboo curtains; bamboo woodworking art; bamboo; jewellery cases [caskets], not of precious metal; antlers (stag); display boards; honeycombs; boxes (nesting) for household pets; nesting boxes for household pets; nesting boxes; bracelets (identification), not of metal, for hospital purposes; bed casters, not of metal; clothes hooks, not of metal; towel dispensers, fixed, not of metal; hooks, not of metal, for clothes rails; dispensers (towel), not of metal, fixed; furniture fittings, not of metal; casters, not of metal (furniture); furniture partitions of wood; magnetic pillow; air mattresses, not for medical purposes; air pillows, not for medical purposes; cushions; sleeping sack; bags (sleeping) for camping; down leather pillow; jade pillow; pillows; mattress (straw); curtain holders, not of textile material; locks [other than electric], not of metal; rollers (curtain); rings (curtain); fittings, not of metal (window); woven timber blinds [furniture]; curtain rails; curtain rollers; wall plugs, not of metal; slatted indoor blinds; blinds (slatted indoor); curtain rods; curtain hooks; curtain tie-backs.

Class 21: Make-up removing appliances, electric.

Class 24: Plastic bedsheet mosquito nets.

Class 25: Leather (clothing of imitations of); dust coat; clothing; teddies [undergarments]; frocks; overalls; beach clothes; waistcoats; ultra-red clothes; collar protectors; gabardines [clothing]; jerseys [clothing]; bodices [lingerie]; corsets [underclothing]; tights; detachable collars; trousers; togas; combinations [clothing]; breeches [for wear]; underpants; drawers [clothing]; jackets (stuff) [clothing]; camisoles; leather (clothing of) or clothing of leather; furs [clothing]; pelisses; clothing of leather; liveries; cheong-sam; jackets [clothing]; coats (top); skirts; sweaters; brassieres; coats; photographing vest; gowns (dressing); pyjamas or pajamas (am); suits; pullovers; children's garments; outerclothing; sweat-absorbent underclothing [underwear]; corselets; cuffs; linen (body) [garments]; shoulder wraps; down cloth; bath robes; sports jerseys; knitwear [clothing]; paper clothing; uniforms; tee-shirts; singlets; vests; dressing gowns; pants; petticoats; shirts; underwear; underclothing; ready-made clothing; parkas; slips [undergarments]; fishing vests; underclothing (anti-sweat); linen (body) [garments] or underclothing or underwear; stuff jackets [clothing]; leather (clothing of); pajamas (AM); child cloth; singlets or sports jerseys; special functional dress (magnetism, infrared); babies'pants; layettes [clothing]; bibs, not of paper; babies' diapers of textile; napkins (babies) of textile; wet suits for water-skiing; motorists' clothing; trunks (bathing); bathing trunks; cyclists' clothing; judogi; wrestling dress; clothing for gymnastics; bathing drawers; bathing caps; bathing suits; waterproof clothing; rain-cloak; raincoat (raincap, shawl); costumes (masquerade); masquerade costumes; saris; dance cloth; theatrical costume; yangge dress; boots (ski) or ski boots; mountain climbing shoes; shoe for mountain climbing (with metal nails); track shoe; gymnastic shoes; running shoe; football shoes; studs for football boots [shoes]; football boots; football boots [shoes] (studs for); goloshes; spats; beach shoes; sandals; wooden shoes; trouser straps; galoshes; slippers; lace boots; shoes; footwear; inner soles; gaiters; boots; rain boot; bath sandals; bath slippers; sports shoes; boots for sports; half-boots; esparto shoes or sandals; hoods [clothing]; hats; headgear for wear; caps [headwear]; miters [hats]; skull caps; headbands [clothing]; berets; top hats; bamboo hat; ear muffs [clothing]; wedding dresses; wedding gowns; footmuffs, not electrically heated; hosiery; sock suspenders; trouser socks; socks; stockings (sweat-absorbent); leggings; stockings; garters; stocking suspenders; socks; mittens; muffs [clothing]; gloves [clothing]; neck ties; tie; scarf; veils [clothing]; pelerines; collars [clothing] or shoulder wraps; shawls; mantillas; fur stoles; turbans; scarfs; pocket squares; ascots; bandanas [neckerchiefs]; boas [necklets]; belts [clothing]; straps (gaiter); strap; belts (money) [clothing]; girdles; braces for clothing [suspenders] or suspenders; sashes for wear; wedding veil; maniples; chasubles; wimples; caps (shower); insole.

Class 26: Hair colouring caps.

Class 28: Swimming belts; swimming jackets.

2. European Union trade mark application No 12 529 764 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 529 764. The opposition is based on earlier well-known trade mark PIERRE CARDIN within the meaning of Article 6bis of the Paris Convention, of which the opponent claims the well-known character in all Member States of the European Union (except Italy), and on the following earlier trade marks:

French trade mark registration No 1 227 402 for goods in Classes 20 and 21.

French trade mark registration No 13 3 998 456 PIERRE CARDIN for goods in Class 3.

French trade mark registration No 12 3 912 171 PIERRE CARDIN for goods in Classes 10, 12, 18 and 20.

French trade mark registration No 11 3 805 686 for goods in Classes 9, 16, 18, 21, 24 and 25.

French trade mark registration No 10 3 781 180 for goods in Classes 9, 16, 18, 21, 24 and 25.

French trade mark registration No 10 3 774 368 PIERRE CARDIN for goods in Class 12.

French trade mark registration No 98 722 085 PIERRE CARDIN for goods in Class 26.

International registration No 477 455 with designations to the Benelux countries, Germany, Spain, Italy, Latvia, Hungary, Austria, Portugal, Romania, Slovenia, Slovakia of the sign, , which was filed on and takes effect from 27/06/1983 for goods in Classes 11, 20, 21and 34.

International registration No 1 133 964 with designations to Czech Republic and Poland for the sign PIERRE CARDIN, which was filed on and takes effect from 14/09/2012 for goods in Classes 10, 12 and 20.

International registration No 1 129 976 with a designation to Italy for the sign , which was filed on and takes effect from 01/06/2012 for goods in Classes 18, 24 and 25.

International registration No 1 061 972 with designations to Hungary and Portugal for the sign PIERRE CARDIN, which was filed on and takes effect from 02/11/2010 for goods in Class 12.

International registration No 803 664 with designations to the Benelux countries, Czech Republic, Denmark, Germany, Estonia, Greece, Spain, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland and Sweden for the sign PIERRE CARDIN EVOLUTION, which was filed on and takes effect from 14/04/2003 for goods in Class 25.

International registration No 613 780 with designations to Germany, Poland, the United Kingdom for the sign PIERRE CARDIN, which was filed on and takes effect from 28/01/1994 for goods in Classes 9, 14, 18, 20, 21 and 25.

International registration No 446 033 with designations to Bulgaria, the Benelux countries, Czech Republic, Denmark, Germany, Spain, Italy, Latvia, Hungary, Austria, Portugal, Romania, Slovenia, Slovakia, Finland and Sweden for the sign , which was filed on and takes effect from 23/07/1979 for goods in Classes 9, 14, 18, 24 and 25.

International registration No 373 519 with designations to the Benelux countries, Czech Republic, Germany, Greece, Spain, Italy, Hungary, Austria, Poland, Romania, Slovakia, the United Kingdom of the sign PIERRE CARDIN, which was filed on and takes effect from 13/10/1970 for goods and services in Classes 5, 7, 8, 11, 19, 20, 23, 27, 28, 30, 32, 41 and 42.

International registration No 332 384 with designations to Bulgaria, the Benelux countries, Czech Republic, Denmark, Germany, Estonia, Spain, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden of the sign PIERRE CARDIN, which was filed on and takes effect from 16/02/1967 for goods in Classes 3, 9, 14, 18, 21, 24, 25 and 26.

European Union trade mark registration No 9 761 073, PIERRE CARDIN STYLE, which was filed on 24/02/2011for goods in Class 3.

European Union trade mark registration No 8 634 594, , which was filed on 22/10/2009 for goods in Class 3.

European Union trade mark registration No 8 534 216, , which was filed on 08/09/2009 for goods in Class 3.

European Union trade mark registration No 7 138 373, PIERRE CARDIN COLLECTION, which was filed on 06/08/2008 for goods in Class 3.

European Union trade mark registration No 5 875 554, PIERRE CARDIN, which was filed on 04/5/2007 for goods in Classes 18 and 25.

Cypriot trade mark registration No 80 111, PIERRE CARDIN, which was filed on 25/01/2012 for goods in Class 24.

Maltese trade mark registration No 51 275, PIERRE CARDIN, which was filed on 31/01/2012 for goods in Class 24.

The opponent invoked Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR in relation to the well-known trade mark; and Article 8(1)(b) and 8(5) EUTMR in relation to the remaining earlier rights.

PRELIMINARY REMARK – EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(c) IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

In cases where the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that its registered mark has acquired a high degree of distinctiveness by use.

In the present case, the opposition is based on European Union, French, international, Cypriot and Maltese trade mark registrations under Article 8(1)(b) EUTMR. In addition, the opponent has claimed that the same marks are well-known marks in all Member States of the European Union for goods that are entirely included in the specification of these registered marks. Therefore, the Opposition Division considers that the opposition is not based on well-known marks, but rather on registered trade marks for which enhanced distinctiveness is claimed. The examination of the opposition will proceed on this basis.

SUBSTANTIATION

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

If the mark is a figurative mark, 3D mark, other mark, etc., the representation of the mark as applied for or registered must be filed.

In the present case, with regard to French trade mark registrations No 1 227 402, No 11 3 805 686 and No 10 3 781 180, and International Registrations No 477 455 and No 446 033, the claims submitted by the opponent within the three-month opposition period are not reflected in the evidence submitted. The opposition is based on word marks whereas the evidence submitted by the opponent, which consists of extracts from the national and WIPO databases accompanied by the translations thereof into the language of the proceedings, shows the following figurative signs:

French trade mark registration No 1 227 402 for goods in Classes 20 and 21.

French trade mark registration No 11 3 805 686 for goods in Classes 9, 16, 18, 21, 24 and 25.

French trade mark registration No 10 3 781 180 for goods in Classes 9, 16, 18, 21, 24 and 25.

International registration No 477 455 with designations to the Benelux, Germany, Spain, Italy, Latvia, Hungary, Austria, Portugal, Romania, Slovenia, Slovakia of the sign, , which was filed on and takes effect from 27/06/1983 for goods in Classes 11, 20, 21and 34.

International registration No 446 033 with designations to Bulgaria, Benelux, Czech republic, Denmark, Germany, Spain, Italy, Latvia, Hungary, Austria, Portugal, Romania, Slovenia, Slovakia, Finland and Sweden of the sign , which was filed on and takes effect from 23/07/1979 for goods in Classes 9, 14, 18, 24 and 25.

The extracts from these databases are not sufficient to substantiate these earlier trade marks, because the evidence refers to figurative marks when the opposition has been based on word marks.

On 06/11/2014, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 18/03/2015.

Within this time limit, the opponent did not submit any other evidence.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded. In the present case, the opponent filed evidence in order to substantiate the earlier marks on 13/03/2015. According to these documents some of the earlier marks are figurative instead of word marks as claimed in the notice of opposition.

The opposition must therefore be rejected as unfounded as far as it is based on French trade mark registrations No 1 227 402, No 11 3 805 686 and No 10 3 781 180, and International Registrations No 477 455 and No 446 033. The Opposition Division will proceed with the examination of the opposition based on the other earlier trade marks.

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 shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use of, inter alia, French trade mark No 98 722 085, International Registrations No 613 780, No 373 519 and No 332 384, and EUTM No 5 875 554 all of them for the word mark ‘PIERRE CARDIN’.

The request was submitted in due time and is admissible regarding French trade mark No 98 722 085 and EUTM No 5 875 554, as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Earlier trade mark No 332 384 which was filed on and takes effect from 16/02/1967 for goods in Classes 3, 9, 14, 18, 21, 24, 25 and 26, is an international registration designating the individual Member States of Bulgaria, Benelux, Czech Republic, Denmark, Germany, Estonia, Spain, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, and Sweden. Each Member State has either a 12 or 18 month deadline to issue a provisional refusal under the Madrid Protocol. Where a provisional refusal is issued within this deadline, the date that will be decisive in determining whether the mark is subject to proof of use obligation is the date when the proceedings leading to the provisional refusal are concluded, namely when the Statement of Grant of Protection is issued. Additionally, where a provisional refusal has not been issued, but a Statement of Grant of Protection is issued prior to the expiry of the 12 or 18 month deadline, this will be the decisive date.

However, Bulgaria, Denmark, Finland and Sweden, have been designated on 04/10/2012. The subsequent designation concerns Class 25 only. The Statements of Grant of Protection were published by WIPO respectively on 14/11/2013; 06/06/2013; 26/12/2013 and 13/03/2014. It can be inferred from these dates that the earlier mark had not been protected for at least five years on the relevant date. Therefore, the request for proof of use is inadmissible for the following Member States: Bulgaria, Denmark, Finland and Sweden as far as it concerns Class 25.

International registration No 613 780 which was filed on and takes effect from 28/01/1994 for goods in Classes 9, 14, 18, 20, 21 and 25 is an international registration designating the individual Member States of Germany, Poland and the United Kingdom. However, Germany and the United Kingdom have been designated on 15/12/2011. The subsequent designation concerns Class 20 only as regards Germany and classes 9, 20 and 21 as regards the United Kingdom. The Statements of Grant of Protection were published by WIPO respectively on 17/05/2012 and 30/08/2012. It can be inferred from these dates that the earlier mark had not been protected for at least five years on the relevant date. Therefore, the request for proof of use is inadmissible for the following Member States: United Kingdom and Poland as far as it concerns Class 20 as regards Germany and Classes 9, 20 and 21 as regards the United Kingdom.

International registration No 373 519 which was filed on and takes effect from 13/10/1970 for goods and services in Classes 5, 7, 8, 11, 19, 20, 23, 27, 28, 30, 32, 41 and 42 is an international registration designating the individual Member States of the Czech Republic, Germany, Benelux, Greece, Spain, Italy, Hungary, Austria, Poland, Romania, Slovakia, and the United Kingdom. However, the United Kingdom and Poland have been designated on 12/12/2013. The Statements of Grant of Protection were published by WIPO respectively on 06/03/2014 and 03/07/2014. It can be inferred from these dates that the earlier mark had not been protected for at least five years on the relevant date. Therefore, the request for proof of use is inadmissible, inter alia, for the following Member States: United Kingdom and Poland.

The contested application was published on 25/07/2014. The opponent was therefore required to prove that the above-mentioned trade marks on which the opposition is based were put to genuine use in the European Union, France, Benelux, Czech Republic, Estonia, Germany, Greece, Lithuania, Spain, Italy, Latvia, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia from 25/07/2009 to 24/07/2014 inclusive.

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

French trade mark No 98 722 085 :

Class 26: Haberdashery except threads and yarns; passementerie; lace and embroidery, ribbons and braids; buttons, hooks and eyelets, pins and needles; snap fasteners; artificial flowers and fruits; lapel pins; hooks and fasteners for clothing; buckles clothing accessories; ornamental badges; hat ornaments not made of precious metal; hair ornaments; hair bands and hairnets, hair pins and grips, hairclips; wigs; fancy goods; slide fasteners; shoelaces; shoe clips; fastenings for braces; belt clasps; elastic ribbons; frills lace; heat adhesive patches for decoration or repair of textile articles haberdashery; spangles for clothing; sewing boxes.

EUTM No 5 875 554 :

Class 18: Leather and imitations of leather; animal skins, hides; trunks, suitcases and travelling bags; umbrellas; parasols and walking sticks; whips, harness and saddlery; saddlery goods; handbags; beach bags; bags, travelling sets and travelling trunks; shopping bags; rucksacks; sports bags (except those adapted for products they are designed to carry); wheeled shopping bags; garment bags for travel; school satchels, pocket wallets; card cases (notecases), attaché cases; briefcases; key cases (leatherware); purses, not of precious metal; vanity cases (not fitted); hat boxes of leather; sling bags for carrying infants; collars and covers for animals.

Class 25: Clothing; knitwear; slips; underwear; pyjamas; dressing gowns; sweaters; skirts; dresses; trousers; jackets; coats; raincoats; shirts; ties; scarves; mufflers; belts; gloves (clothing); braces; headgear, hats, caps; articles of footwear; socks, stockings and tights; footwear (except orthopaedic shoes), slippers, boots; beach shoes, ski boots; sports shoes; bathing trunks and swimsuits; sportswear (except diving suits); layettes

International Registration No 613 780 designating Poland:

Class 9: Spectacles

Class 14: Precious metals and their alloys and objects made of these materials or coated therewith (excluding cutlery, forks and spoons).

Class 18: Leather and imitations of leather; articles made of these materials not included in other classes; skins, trunks and suitcases; umbrellas, parasols and walking sticks, whips, saddlery.

Class 20: Furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid and substitutes for all these materials or of plastics.

Class 21: Household and kitchen utensils and containers (neither of precious metal nor coated therewith), combs and sponges, brushes (except paintbrushes); material for brush-making, articles for cleaning purposes, steel wool; unworked or semi-worked glass (except building glass); glassware, porcelain and earthenware not included in other class.

Class 25: Clothing, footwear, headgear.

International Registration No 373 519 designating Czech Republic, Germany, Benelux, Greece, Spain, Italy, Hungary, Austria, Romania, Slovakia

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for dental fillings and dental impressions; disinfectants; pesticides; fungicides, herbicides.

Class 7: Machines and machine tools; motors and engines (other than for land vehicles); machine coupling components and transmission belts (other than for land vehicles); agricultural implements; incubators for eggs.

Class 8: Hand tools and implements, hand-operated; cutlery, forks and spoons; side arms, other than firearms; razors.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 19: Building materials, not of metal; rigid pipes, not of metal, for building; asphalt, pitch and bitumen; buildings, transportable, not of metal; monuments, not of metal.

Class 20: Furniture, mirrors (looking glasses), picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 23: Yarn and thread for textile purposes.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.

Class 28: Games, toys; gymnastic and sporting articles not included in other classes; decorations for Christmas trees

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (except salad dressings); spices; ice for refreshment.

Class 32: Beer; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 41: Publishing of books and magazines, lending of books; entertainment and shows.

Class 42: Hotel services, providing food and drink, rest homes, day-nurseries, beauty and hairdressing salons.

International Registration No 332 384 designating Benelux, Czech republic, Germany, Estonia, Spain, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia and Slovakia.

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions.

Class 9: Optical goods.

Class 14: Precious metals and their alloys and objects made from these materials or coated therewith (excluding cutlery); jewellery, precious stones; timepieces and other chronometric instruments.

Class 18: Leather and imitation leather; articles made thereof, not included in other classes; skins and hides, trunks and suitcases, umbrellas, parasols and walking sticks, whips, harness and saddlery.

Class 21: Small portable household and kitchen utensils and containers (neither of precious metals, nor coated therewith); combs and sponges; brushes (excluding paintbrushes); brush-making materials; instruments and material for cleaning purposes; steel wool; glassware, porcelain and earthenware not included in other classes.

Class 24: Textile fabrics; bed and table covers; textile articles not included in other classes.

Class 25: Clothing, including boots, shoes and slippers

Class 26: Lace and embroidery, ribbons and braids; buttons, snap fasteners, hooks and eyelets, pins and needles; artificial flowers.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 15/06/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/08/2015 to submit evidence of use of the earlier trade marks. After a request made by the opponent, this time limit was extended until 20/10/2015. On 14/10/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

1 invoice of 2012 related to the sale of ties to a British company; 4 invoices from 10/12/2012 to 22/07/2014 related to the sale of belts to British companies; 2 invoices of 2014 related to the sale of silk ties to two British companies, 10 invoices dated from 20/12/2011 to 24/10/2014 related to the sale to British companies of credit card wallets, 14 invoices dated from 04/04/2013 to 04/12/2013 related to the sale to British companies of luggage wallets, 8 invoices dated from 06/03/2013 to 21/08/2014 related to the sale to British companies of socks; 2 invoices dated 04/04/2012 and 18/02/2013.
Photographs of ties and belts.
Brochure published in 2009 which shows the use of the trade mark PIERRE CARDIN for credit card, hip wallet, passport wallet; brochures published in 2011 and 2013 which show the use of the trade mark PIERRE CARDIN for luggage; a brochure related to socks; a catalogue dated 2014 for belts sold in Germany.
Attestations from licensees confirming that they have been the exclusive licensees:

in the United Kingdom for men’s ties, cravats, squares since 1993, and men’s belts since 2004.
In Germany, Austria, Denmark and Finland for man shoes since 1996.

Purchase orders dated 2011, 2012, 2013 for ties, knitwear, white poplin, trousers and polo.
Extracts from magazine, articles from newspapers dated from 2010 to 2013.

In addition, the opponent’s evidence to prove reputation filed on 13/03/2015 was also submitted before the time limit set by the Office and, therefore, this evidence can also be analysed here as far as it makes reference to the period from 25/07/2009 to 24/07/2014. The evidence is the following:

The biography of Pierre Cardin which details the career of the man.

Article from Wikipedia, the free Encyclopaedia on Pierre Cardin.
International Herald Tribune of 23/03/2010 entitled “Pierre Cardin: One step ahead of tomorrow”.
Gala Fashion dated 29/09 (year not indicated) entitled “Pierre Cardin, back on the catwalks”.
The Daily Telegraph of 30/09/2010.
Women’s Wear daily dated 30/09/2010.
An article by UNESCO on Pierre Cardin.
Extract from the Magazine Label France dated March 1996 entitled “The great names of French Haute Couture Pierre Cardin”.

Papierdoll Fashion Magazine June 2006 entitled: “Retrospective: Pierre Cardin”.
Extract from Reuters entitled “Pierre Cardin: China could lead 21st century fashion”.
International Herald Tribune of 23/07/1991 entitled “The label and the Man: Pierre Cardin”.
Extract from the book Pierre Cardin Fifty years of fashion and design.
Article of 27/01/2005 entitled “True Haute Couture has vanished”.
Taipei Times of 20/10/2006 entitled “The man behind the label Pierre Cardin”.
Infomat fashion industry search engine, biography of Pierre Cardin.
Vogue.co.uk Pierre Cardin’s Museum.
Blog, the unwritten record 8/09/2014.
CCTM.com, article : Fashion legend Pierre Cardin inaugurates Paris museum.
BBC NEWS magazine of 06/11/2011, article Pierre Cardin on banks and working at 89.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The documents submitted show that the place of use is the United Kingdom and France. This can be inferred from the language of the documents, the currency mentioned in the invoices (pounds), the addresses in the invoices, in the purchase orders and from magazine articles. Therefore, the evidence relates to the relevant territories. However, none of the documents specifically refer to the other territories designated by the International registrations during the relevant period.

As regards Germany, only a catalogue in relation to belts, dated 2014, has been provided. However, this catalogue is not corroborated by other means of evidence like invoices. The same can be said for the SAMO’s attestation which concern men’s shoes sold in Germany, Austria, Denmark and Finland.

Therefore, the evidence does not relate to any of the countries designated by IR No 332 384 and IR No 613 780.

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices, purchase orders, brochures and attestations from suppliers, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices prove constant sales of high quantities of the PIERRE CARDIN clothes, luggage and wallets throughout the relevant period.

The evidence demonstrates that the word marks PIERRE CARDIN were used as registered.

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).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to establish genuine use of the earlier trade marks during the relevant period in France and the United Kingdom.

As regards the earlier European Union trade mark, EUTM No 5 875 554 must be used ‘in the Union’ (Articles 15(1) and 42(2) EUTMR). Following the Court judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816, § 44, Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the Union (paragraph 44). In territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of markets. France and United Kingdom are, together, countries with over 130 million inhabitants. For this reason, the Opposition Division is satisfied that use in France and United Kingdom constitutes use in the European Union. Therefore, the evidence relates to the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

Indeed, there is no evidence of use at all for goods and services in Classes 5, 7, 8, 11, 14, 19, 20, 21, 23, 26, 27, 28, 30, 32, 41 and 42.

Furthermore, the evidence submitted to prove use of optical goods in Class 9 is clearly insufficient. The documents filed, namely a newspaper article, do not provide the Opposition Division with any information concerning the commercial volume, the duration, and the frequency of use.

Therefore, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks FR No 98 722 085, IR No 373 519 were genuinely used in the relevant territories during the relevant period of time. Indeed, these marks were registered in some of these classes only.

Secondly, in Classes 18 and 25 use is demonstrated for ties, cravats, belts, socks, trousers, polo, credit card wallet, hip wallet, passport wallet, trolley case set and wheeled holdall, only.

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.

In the present case, the evidence proves use for ties, cravats, belts, socks, trousers, polo belonging to the following category in the specification: clothing. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier marks are registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for clothing.

The evidence proves also use for shoes.

Furthermore, the evidence proves use for credit card wallet, passport wallet, trolley case set, wheeled holdall belonging to the following categories in the specification: pocket wallet and travelling bags. 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 as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the EUTM No 5 875 554 for pocket wallet and travelling bags.

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 shall, 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 shows genuine use of the following trade mark:

EUTM No 5 875 554

Class 18: Pocket wallet and travelling bags.

Class 25: Clothing and shoes.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition as regards the above-mentioned earlier mark.

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 following opponent’s trade mark registrations: French trade mark registrations No 13 3 998 456 ; No 12 3 912 171; No 10 3 774 368 ; International registrations No 1 133 964 ; No 1 129 976 ; No 1 061 972 ; No 613 780 designating the United Kingdom in Classes 9, 20 and 21and Germany in Class 20 ; No 373 519 designating Poland and the United Kingdom; No 332 384 designating Bulgaria, Denmark, Finland and Sweden in Class 25; European Union trade mark registration No 5 875 554; Cypriot trade mark registration No 80 111 and Maltese trade mark registration No 51 275.

The goods

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

French trade mark registration No 13 3 998 456 “PIERRE CARDIN”:

Class 3: Bleaching preparations, washing, cleaning, polishing, scouring and abrasive preparations, colognes, deodorants for persona’ use perfumery, essential oils, soaps, milk products and toiletries, cosmetics, makeup and cleansing, cosmetic products and preparations for skin care, for slimming, for bath, for skin tanning, cosmetic kits, masks, nail polish, lipstick, toothpaste, care products, mouth washes, not for medical use, hair lotions and products for hair care, shampoos, dyes and hair dyes, depilatories, shaving, shaving soap, cotton wool and cotton buds for cosmetic purposes, tissues impregnated with cosmetic lotions.

French trade mark registration No 12 3 912 171 “PIERRE CARDIN”:

Class 10: Feeding bottles, feeding bottle teats; babies’ pacifiers (teats), breast-feeding teats made of latex or silicone; teething rings; breast-feeding apparatus, breast pumps; thermometers for medical purposes; gloves for massage; medical apparatus for body exercises, beauty massage apparatus; soporific pillows for insomnia.

Class 12: Tricycles; children’s nacelles for vehicles and baby buggies;

Class 18: Leather and imitation leather, trunks and suitcases, bags and suitcases on wheels, handbags, backpacks, shopping bags, beach bags, school bags, travel bags, briefcases, purses not of precious metal ; key cases, umbrellas, umbrellas, parasols; unfitted toiletries called “vanity cases”; bags for carrying infants, bags kangaroo baby carriers; waist packs, bags, garment bags for the trip; hat boxes of leather;

Class 20: Cupboards; bookcases (furniture); sideboards; settees; chairs (seats); high chairs for babies; chests not of metal; chests of drawers; racks (furniture); armchairs; seats; beds; screens (furniture); tables; stools; display stands; mirrors; works of art of wood, wax, plaster or plastic; baskets and waste baskets not made of metal; boxes of wood or plastic; playpens for babies, cradles; infant walkers; bedding (except linen); cushions, pillows, bed bases, mattresses; clothes hangers and clothes covers; curtain rings, rods and hooks; garment hooks not made of metal; door handles, not of metal; umbrella stands; magazine racks; towel closets (furniture); ladders of wood or plastics; slatted indoor blinds; mannequins.

French trade mark registration No 10 3 774 368 “PIERRE CARDIN”:

Class 12: Vehicles, apparatus for locomotion by land, air or water; boats, canoes; caravans; motorcycles, bicycles; tilt trucks; trucks; aerial conveyors; parachutes; pontoons; trailers (vehicles); shock absorbers, tires, engine hoods, bodyworks, chains, chassis, bumpers, sun-blinds adapted for automobiles; vehicle brakes, brake fittings and windshields; direction signals for vehicles; windshield wipers; rear-view mirrors; air tubes and spikes for tires; tires; head restraints and safety belts for vehicle seats, children’s safety seats for vehicles; bicycle stands, frames, dress guards, brakes, handlebars, saddles and bicycle pumps; strollers (pushchairs); vehicle covers, seat covers for vehicles; luggage carriers, bicycle racks, ski carriers for vehicles; strollers; anti-theft devices for vehicles, audible warning systems for vehicles; fork lift trucks, goods handling carts; shopping trolleys; golf carts; motors and engines for land vehicles.

International registration No 1 133 964 with designations to Czech Republic and Poland “PIERRE CARDIN”:

	Class 10: Feeding bottles, feeding bottle teats; babies' pacifiers (teats), breast-feeding teats made of latex or silicone; teething rings; breast-feeding apparatus, breast pumps; thermometers for medical purposes; gloves for massage; medical apparatus for body exercises, beauty massage apparatus; soporific pillows for insomnia.

	Class 12: Tricycles; children's nacelles for vehicles and baby buggies; vehicles, apparatus for locomotion by land, air or water; boats, canoes; caravans; motorcycles, bicycles; tilt trucks; trucks; aerial conveyors; parachutes; pontoons; trailers (vehicles); shock absorbers, tires, engine hoods, bodyworks, chains, chassis, bumpers, sun-blinds adapted for automobiles; vehicle brakes, brake fittings and windshields; direction signals for vehicles; windshield wipers; rearview mirrors; air tubes and spikes for tires; tires; head restraints and safety belts for vehicle seats, children's safety seats for vehicles; bicycle stands, frames, dress guards, brakes, handlebars, saddles and bicycle pumps; strollers (pushchairs); vehicle covers, seat covers for vehicles; luggage carriers, bicycle racks, ski carriers for vehicles; strollers; anti-theft devices for vehicles, audible warning systems for vehicles; fork lift trucks, goods handling carts; shopping trolleys; golf carts; motors and engines for land vehicles.

	Class 20: Cupboards; bookcases (furniture); sideboards; settees; chairs (seats); high chairs for babies; chests not of metal; chests of drawers; racks (furniture); armchairs; seats; beds; screens (furniture); tables; stools; display stands; mirrors; works of art of wood, wax, plaster or plastic; baskets and waste baskets not made of metal; boxes of wood or plastic; playpens for babies, cradles; infant walkers; bedding (except linen); cushions, pillows, bed bases, mattresses; clothes hangers and clothes covers; curtain rings, rods and hooks; garment hooks not made of metal; door handles, not of metal; umbrella stands; magazine racks; towel closets (furniture); ladders of wood or plastics; slatted indoor blinds; mannequins.

International registration No 1 129 976 with designation to Italy :

	Class 18: Leather and imitations of leather; trunks and traveling bags; handbags; backpacks, shopping bags, beach bags, school bags; travel bags; satchels; coin purses, not of precious metal; key cases; parasols, umbrellas, sunshades; unfitted vanity cases; sling bags for carrying infants; garment bags for travel; hat boxes of leather.

	Class 24: Fabrics for textile use; fabrics for making clothing; adhesive fabric for application by heat; table linen, tablecloths, towels, bath linen (except clothing); face towels and washing mitts; napkins of textile for removing make-up; labels of cloth; hand towels of textile; handkerchiefs (of textile); mosquito nets; excluding the following goods, namely indoor and outdoor cushion cases, pillowcases, winter and summer sheets, ski bags, Nordic quilting; duvets and comforters.

	Class 25: Clothing; hosiery; body linen (underwear); underwear; pajamas; dressing gowns (bathrobes); sweaters; skirts; dresses; trousers; jackets; coats; raincoats; shirts; neckties; scarves; sashes for wear; belts; gloves (clothing); suspenders; headgear for wear, hats, caps; footwear for women and children (except orthopedic footwear); slippers, boots, beach footwear, sports footwear for women and children; bathing trunks and costumes; clothing for sports (other than for diving); layettes (clothing).

International registration No 1 061 972 with designations to Hungary and Portugal “PIERRE CARDIN”:

Class 12: Vehicles, apparatus for locomotion by land, air or water; boats of all kinds; caravans; motorcycles, bicycles; goods handling carts; trucks; aerial conveyors; parachutes; pontoons; trailers (vehicles); motors and engines; shock absorbers, tires, hoods, bodies, chains, chassis, bumpers, sun-blinds adapted for automobiles; windshields, brakes and brake linings for vehicles; direction signals for vehicles; windshield wipers; rearview mirrors; inner tubes and spikes for tires; pneumatic tires; headrests and safety belts for vehicle seats, children's safety seats for vehicles; kickstands, frames, nets, brakes, handlebars, saddles, pumps for bicycles; baby carriages; scooters; vehicle covers, seat covers for vehicles; luggage carriers, bicycle racks, ski-carriers for vehicles; pushchairs; anti-theft devices for vehicles, horns for vehicles; lifting cars, goods handling carts; shopping trolleys; golf carts.

International registration No 613 780 with designations to the United Kingdom and Germany of the sign PIERRE CARDIN, for respectively goods in Classes 9, 20 and 21 and 20 namely:

Class 9: Spectacles

International registration No 373 519 with designations to Poland and the United Kingdom of the sign PIERRE CARDIN for goods and services in Classes 5, 7, 8, 11, 19, 20, 23, 27, 28, 30, 32, 41 and 42 namely:

Class 8: Hand tools and implements, hand-operated; cutlery, forks and spoons; side arms, other than firearms; razors.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 19: Building materials, not of metal; rigid pipes, not of metal, for building; asphalt, pitch and bitumen; buildings, transportable, not of metal; monuments, not of metal.

Class 23: Yarn and thread for textile purposes.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.

Class 28: Games, toys; gymnastic and sporting articles not included in other classes; decorations for Christmas trees

Class 32: Beer; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 41: Publishing of books and magazines, lending of books; entertainment and shows.

Class 42: Hotel services, providing food and drink, rest homes, day-nurseries, beauty and hairdressing salons.

International registration No 332 384 with designations to Bulgaria, Denmark, Finland and Sweden of the sign PIERRE CARDIN, for goods in Class 25.

Class 25: Clothing, including boots, shoes and slippers

European Union trade mark registration No 5 875 554 “PIERRE CARDIN”:

Class 18: Pocket wallet and travelling bags.

Class 25: Clothing, shoes.

Cypriot trade mark registration No 80 111 “PIERRE CARDIN”:

Class 24: Fabrics for textile use; textiles for making articles of clothing; adhesive fabric for application by heat; table linen, tablecloths, napkins, bath linen (except clothing); towels and face cloths; tissues of textile for removing make-up; labels (textile); towels of textile; handkerchiefs of textile; mosquito nets, excluding the following products: cushion covers for indoor and outdoor use; pillow covers; winter and summer sheets; quilts and quilt fillings; duvets and quilts

Maltese trade mark registration No 51 275 “PIERRE CARDIN”:

The contested goods are the following:

Class 7: Door closers, electric; Door openers, electric.

Class 8: Flat irons, electric; Irons (Flat), electric.

Class 9: Notebook computers; Laptop computers; Software (Computer) [recorded]; Pens (Electronic) [visual display units]; Electronic pocket translators; Optical discs; Computers, Laptop computers; Programs (Computer game); Peripheral devices (Computer); Pocket calculators; Monitors [computer programs]; keyboard cover; Money counting and sorting machines; Electronic tags for goods; Time clocks [time recording devices]; Clocks (Time) [time recording devices]; Scales; Weights; Precision balances; Weighbridges; Scales (Lever) [steelyards]; Steelyards [lever scales]; Balances [steelyards]; Letter scales; Juke boxes [for computers]; Diaphragms [acoustics]; Juke boxes [musical]; Musical automata (Coin-operated) [juke boxes]; self-motion advertising machine or Auto Advertising Machine; Cinematographic cameras; Darkrooms [photography]; Darkroom lamps [photography]; Projection screens; Photographic prints (Drying apparatus for); Optical lamps; Lenses (Optical); Mirrors for inspecting work; Binoculars; Magnetic wires; Telegraph wires; Wires (Telephone); Cables, electric; Threads (Identification) for electric wires; Identification threads for electric wires; Electricity mains (Material for) [wires, cables]; Starter cables for motors; Copper wire, insulated; Coaxial cables; Video screens; Coils, electric; radio tube; Amplifiers; Tubes (Electric discharge), other than for lighting; Remote control apparatus; goggle; Safety tarpaulins; Life belts; Life saving apparatus and equipment; Life buoys; Life nets; Life jackets; Diving suits; Breathing apparatus for underwater swimming; Ear plugs for divers; Gloves for divers; Sports (Goggles for); Fire blankets; Teeth protectors; Eyeshades; Anti-glare glasses; Bells (Alarm), electric; Alarms; Buzzers, electric; Alarm bells, electric; Push buttons for bells; Electric door bells; Locks, electric; Theft prevention installations, electric; Anti-theft warning apparatus; Buzzers; Fire alarms; Alarms (Fire); Sirens; Bells [warning devices]; Peepholes [magnifying lenses] for doors; Whistle alarms; Sound alarms; Detectors (Smoke); Smoke detectors; Acoustic [sound] alarms; Eyeglass cords; Cases (Eyeglass); Sunglasses; Eyeglasses or Pince-nez; Spectacle glasses; Eyeglass cases; Pince-nez cases; Contact lenses; Containers for contact lenses; Batteries, electric, for vehicles; Accumulators, electric, for vehicles or Batteries, electric, for vehicles; Galvanic cells; Battery chargers; Chargers for electric batteries; Plates for batteries; Battery jars or Accumulator jars; Grids for batteries; Battery boxes or Battery boxes; Batteries, electric; Pocket lamps (Batteries for) or Batteries for pocketlamps; Solar batteries; Batteries for pocketlamps; Accumulators, electric; Jars (Accumulator); Anodes; Anode batteries; Cathodes; Cathodic anti-corrosion apparatus; Galvanic batteries; Batteries for lighting; electrical heated waistcoat, electrical heated clothing; electrical heated glove; electrical heated socks; electrical heated shoe; Fences (Electrified); Electrified fences, Dog whistles; Attracting and killing insects (Electric devices for); Egg-candlers; Magnets (Decorative); child helmet.

Class 10: Medical Clothes.

Class 12: Luggage carriers for vehicles; Seats (Vehicle); Safety belts for vehicle seats; Vehicle wheels; Covers (Seat) for vehicles; Bicycle; Bicycle stands; bike bag; Perambulator covers (Fitted); Golf carts; Wheelbarrows; Safety seats for children [for vehicles]; Covers for baby carriages; Shopping trolleys [carts (Am)]; Two-wheeled trolleys; Wheelchairs; Strollers; Stroller covers [pushchairs]; Trucks (Luggage); Goods handling carts; Hand cars; Carts; Pushchairs; Pushchair covers; Pushchair hoods; Casters for trolleys [vehicles] [carts (Am)]; Prams [baby carriages]; Baby carriages; Hoods for baby carriages; Luggage trucks; pucker luggage barrow; Tires, solid, for vehicle wheels; Tires for vehicle wheels; Cigar lighters for automobiles.

Class 18: Bags for sports or Sports (Bags for); Beach bags; Passport Folder (made by leather); Card cases [notecases]; Travelling bags; Bags (Garment) for travel; Travelling trunks; Travelling sets [leatherware]; Garment bags for travel; Bags for climbers; Straps (Leather); Straps of leather [saddlery]; leather mat; Tool bags of leather [empty]; Boxes of leather or leather board; Leather shoulder belts; Leather straps or Leather thongs; Laces (Leather); Purses; Pocket wallets; Handbags; Frames (Handbag); Handles (Suitcase); School satchels or School bags; File Folder (made by leather); Satchels (School); Bags for campers; Suitcases; Suitcase handles; Vanity cases [not fitted]; Key cases [leatherware]; Cheque Folder (made by leather); Belts (Leather shoulder); Pouches, of leather, for packaging; Bags [envelopes, pouches] of leather, for packaging; Sling bags for carrying infants; Backpacks Rucksacks; Trunks [luggage]; Wheeled shopping bags; Briefcases; Attaché cases; Shopping bags; Bags (Net) for shopping; Umbrellas; Umbrella sticks; Umbrella handles; Umbrella or parasol ribs.

Class 20: Easy chairs; Massage tables; mattresses; Bedsteads [wood]; Mattresses (Spring); Shelves for filing-cabinets [furniture]; Benches [furniture]; TV set frame; Mattresses; Armchairs; Footstools; Hangers (Coat); Washstands [furniture]; Counters [tables]; Flower-pot pedestals; Dressing tables; plot table; Furniture; Furniture of metal; Seats of metal; Hairdressers' chairs; Wood ribbon; Screens [furniture]; Bottle racks; Umbrella stands; Sofas; Dinner wagons [furniture]; Furniture shelves; Writing desks; Tea carts; Cupboards; Filing cabinets; Cabinet work; Desks [furniture]; Furniture (School); Cradles; Bassinettes; Cabinets (Medicine); Coat hangers; Racks [furniture]; Garment covers [storage] Beds (Hospital); Chairs [seats]; Infant walkers; High chairs for babies; Chests of drawers; Tea trolleys; Book rests [furniture]; Magazine racks; Trolleys for computers [furniture]; Trolleys [furniture]; Desks; Tables; Seats; Stools; Furniture (Office); Office furniture; Beds; Floating containers, not of metal; Baskets, not of metal; Trays, not of metal; Pallets, not of metal (Loading); Bread baskets (Bakers); Taps for casks [not of metal]; Baskets (Fishing); Clips (Cable and pipe) of plastics; Cable or pipe clips of plastics; Handles, not of metal (Knife); Benches (Work); Keyboards for hanging keys; Tables of metal; Stairs (Mobile boarding), not of metal, for passengers; Ladders of wood or plastics; Cork bands; Mats, removable, for sinks; Playpens for babies; bamboo arts and crafts; bamboo basket; Bamboo curtains; bamboo woodworking art; Bamboo; Jewellery cases [caskets], not of precious metal; Antlers (Stag); Display boards; Honeycombs; Boxes (Nesting) for household pets; Nesting boxes for household pets; Nesting boxes; Bracelets (Identification), not of metal, for hospital purposes; Bed casters, not of metal; Clothes hooks, not of metal; Towel dispensers, fixed, not of metal; Hooks, not of metal, for clothes rails; Dispensers (Towel), not of metal, fixed; Furniture fittings, not of metal; Casters, not of metal (Furniture); Furniture partitions of wood; magnetic pillow; Air mattresses, not for medical purposes; Air pillows, not for medical purposes; Cushions; sleeping sack; Bags (Sleeping) for camping; down leather pillow; jade pillow; Pillows; Mattress (Straw); Curtain holders, not of textile material; Locks [other than electric], not of metal; Rollers (Curtain); Rings (Curtain); Fittings, not of metal (Window); Woven timber blinds [furniture]; Curtain rails; Curtain rollers; Wall plugs, not of metal; Slatted indoor blinds; Blinds (Slatted indoor); Curtain rods; Curtain hooks; Curtain tie-backs.

Class 21: Make-up removing appliances, electric; Straws for drinking.

Class 24: Plastic bedsheet Mosquito nets; Bed covers of paper; Coverings of plastic for furniture.

Class 25: Leather (Clothing of imitations of); dust coat; Clothing; Pockets for clothing; Teddies [undergarments]; Frocks; Overalls; Jumpers [shirt fronts]; Beach clothes; Waistcoats; Ultra-red Clothes; Collar protectors; Dress shields; Gabardines [clothing]; Jerseys [clothing]; Bodices [lingerie]; Corsets [underclothing]; Tights; Detachable collars; Trousers; Togas; Combinations [clothing]; Breeches [for wear]; Underpants; Drawers [clothing]; Jackets (Stuff) [clothing]; Chemisettes [shirt fronts]; Camisoles; Leather (Clothing of) or Clothing of leather; Furs [clothing]; Pelisses; Clothing of leather; Liveries; cheong-sam; Jackets [clothing]; Coats (Top); Skirts; Sweaters; Brassieres; Coats; Yokes (Shirt); Photographing Vest; Gowns (Dressing); Pyjamas or Pajamas (Am); Suits; Pullovers; children's garments; Outerclothing; Sweat-absorbent underclothing [underwear]; Corselets; Cuffs; Linen (Body) [garments]; Shields (Dress); Shoulder wraps; down cloth; Bath robes; Sports jerseys; Knitwear [clothing]; Paper clothing; Uniforms; Tee-shirts; Singlets; Vests; Dressing gowns; Pants; Petticoats; Shirts; Shirt yokes; Shirt fronts; Underwear; Underclothing; Ready-made linings [parts of clothing]; Ready-made clothing; Parkas; Slips [undergarments]; Fishing vests; Underclothing (Anti-sweat); Linen (Body) [garments] or Underclothing or Underwear; Stuff jackets [clothing]; Leather (Clothing of); Pajamas (Am); child cloth; Singlets or Sports jerseys; Linings (Ready-made) [parts of clothing]; special functional dress (magnetism, infrared); Babies'pants; Layettes [clothing]; Bibs, not of paper; Babies' diapers of textile; Napkins (Babies) of textile; Wet suits for water-skiing; Motorists' clothing; Trunks (Bathing); Bathing trunks; Cyclists' clothing; judogi; wrestling dress; Clothing for gymnastics; Bathing drawers; Bathing caps; Bathing suits; Waterproof clothing; Rain-cloak; raincoat (raincap,shawl); Costumes (Masquerade); Masquerade costumes; Saris; dance cloth; theatrical costume; yangge dress; Boots (Ski) or Ski boots; mountain climbing shoes; Shoe for Mountain Climbing (with metal nails); track shoe; Gymnastic shoes; running shoe; Football shoes; Studs for football boots [shoes]; Football boots; Football boots [shoes] (Studs for); Shoes (Non-slipping devices for); Goloshes; Spats; Beach shoes; Sandals; Wooden shoes; Trouser straps; Galoshes; Slippers; Lace boots; Shoes; Footwear; Footwear uppers; Shoes (Iron fittings for); Soles for footwear; insole; Fittings of metal for shoes and boots; Shoes (Heelpieces for); Heels; Footwear (Tips for); Uppers (Footwear); Inner soles; Shoes (Welts for); Gaiters; Boots; Welts for boots and shoes; Boot uppers; Boots (Heelpieces for); Boots (Welts for); rain boot; Bath sandals; Bath slippers; Sports shoes; Boots for sports; Half-boots; Esparto shoes or sandals; Hoods [clothing]; Hats; Frames (Hat) [skeletons]; Peaks (Cap); Headgear for wear; Caps [headwear]; Miters [hats]; Skull caps; Headbands [clothing]; Berets; Top hats; bamboo hat; Ear muffs [clothing]; Wedding dresses; Wedding gowns; Footmuffs, not electrically heated; Hosiery; Sock suspenders; trouser socks; socks; Stockings (Sweat-absorbent); Leggings; Stockings; Stockings (Heel pieces for); Garters; Stocking suspenders; Socks; Mittens; Muffs [clothing]; Gloves [clothing]; Neck ties; tie; scarf; Veils [clothing]; Pelerines; Collars [clothing] or Shoulder wraps; Shawls; Mantillas; Fur stoles; Turbans; Scarfs; Pocket squares; Ascots; Bandanas [neckerchiefs]; Boas [necklets]; Belts [clothing]; Straps (Gaiter); strap; Belts (Money) [clothing]; Girdles; Braces for clothing [suspenders] or Suspenders; Sashes for wear; wedding veil; Maniples; Chasubles; Wimples; Caps (Shower).

Class 26: Hair-curlers, electrically heated; Suspenders (Fastenings for); Hair colouring caps; collar flower.

Class 28: Swimming belts; swimming jackets.

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 7:

The contested door closers, electric; door openers, electric are mechanisms that automatically open or close doors. The opponent’s machine tools in Class 7 are mechanical tools that use a power source other than human movement (IR No 373 519). Such mechanisms are complementary. Furthermore, the same companies may produce these both products. The relevant public will often also coincide. Therefore, the goods are considered similar.

Contested goods in Class 8:

The contested goods flat irons, electric; irons (flat), electric are hand-held implements having a flat metal base, which are heated and used to smooth fabric or clothes. They are included in the broad category of the opponent’s hand tools and implements, hand-operated (IR No 373 519). Therefore, they are identical.

Contested goods in Class 9:

The contested sunglasses; eyeglasses or pince-nez; spectacle glasses; lenses (optical); sports (goggles for); goggle; eyeshades; anti-glare glasses are identically contained in both lists of goods (including synonyms) (IR No 613 780) or overlap with the opponent’s spectacles. Therefore, these goods are identical.

The contested contact lenses are highly similar to the opponent’s spectacles (IR No 613 780) as they have the same purpose (to assist defective eyesight), producers, distribution channels and relevant public. They can be in competition.

The contested electrical heated clothing; electrical heated glove; electrical heated socks; electrical heated shoe; electrical heated waistcoat have the same nature, methods of use and relevant public with the opponent’s clothing and shoes (EUTM No 5 875 554) . Therefore, these goods are similar.

The contested batteries, electric, for vehicles; accumulators, electric, for vehicles or batteries, electric, for vehicles; anode batteries; starter cables for motors; electricity mains (material for) [wires, cables]; copper wire, insulated; batteries, electric; accumulators, electric; cables, electric relate to or concern with motor vehicles. They are similar to the opponent’s vehicles (FR No 10 3 774 368). Both the relevant public and the distribution channels of the goods coincide. Furthermore, these goods are complementary.

The contested Binoculars are similar to the opponent’s spectacles (IR No 613 780 ) as they have the same nature, producers, distribution channels and relevant public.

The contested Eyeglass cords; Cases (Eyeglass); Eyeglass cases; Pince-nez cases; Containers for contact lenses are similar to the opponent’s spectacles (IR No 613 780). The relevant public, the usual producers and the distribution channels of the goods coincide. Furthermore, these goods are complementary.

The contested software (computer) [recorded] are similar to the opponent’s services publishing of books and magazines (IR 373 519), as they have the same purpose, providers, and relevant public.

The contested notebook computers; laptop computers; computers, laptop computers; peripheral devices (computer) are similar to the opponent’s games (IR No 373 519), as they have the same distribution channels, producers, and relevant public.

The contested programs (computer game) are similar to the opponent’s games (IR No 373 519), as they have the same distribution channels, producers, and relevant public. Furthermore, these goods are complementary.

For the rest of the contested goods namely: pens (electronic) [visual display units]; electronic pocket translators; optical discs; pocket calculators; monitors [computer programs]; keyboard cover; money counting and sorting machines; electronic tags for goods; time clocks [time recording devices]; clocks (time) [time recording devices]; scales; weights; precision balances; weighbridges; scales (lever) [steelyards]; steelyards [lever scales]; balances [steelyards]; letter scales; juke boxes [for computers]; diaphragms [acoustics]; juke boxes [musical]; musical automata (coin-operated) [juke boxes]; self-motion advertising machine or auto advertising machine; cinematographic cameras; darkrooms [photography]; darkroom lamps [photography]; projection screens; photographic prints (drying apparatus for); mirrors for inspecting work; magnetic wires; telegraph wires; wires (telephone); threads (identification) for electric wires; identification threads for electric wires; coaxial cables; video screens; coils, electric; radio tube; amplifiers; tubes (electric discharge), other than for lighting; remote control apparatus; safety tarpaulins; life belts; life saving apparatus and equipment; life buoys; life nets; life jackets; diving suits; breathing apparatus for underwater swimming; ear plugs for divers; gloves for divers; fire blankets; teeth protectors; bells (alarm), electric; alarms; buzzers, electric; alarm bells, electric; push buttons for bells; electric door bells; locks, electric; theft prevention installations, electric; anti-theft warning apparatus; buzzers; fire alarms; alarms (fire); sirens; bells [warning devices]; whistle alarms; sound alarms; detectors (smoke); smoke detectors; acoustic [sound] alarms; galvanic cells; battery chargers; chargers for electric batteries; plates for batteries; battery jars or accumulator jars; grids for batteries; battery boxes or battery boxes; pocket lamps (batteries for) or batteries for pocketlamps; solar batteries; batteries for pocketlamps; jars (accumulator); anodes; cathodes; cathodic anti-corrosion apparatus; galvanic batteries; batteries for lighting; fences (electrified); electrified fences, dog whistles; attracting and killing insects (electric devices for); egg-candlers; magnets (decorative); child helmet; Optical lamps; Peepholes [magnifying lenses] for doors and the opponent’s goods and services, the Opposition Division cannot find any link. The intended purpose, nature and distribution channels are different. None of the goods and services fulfil a similar function from the consumer’s standpoint. They are not substitutes for one another nor are they in competition with one another. The relevant consumer will not regard the goods and services of the earlier trade marks and the goods of the contested trade mark as originating from the same undertaking. The goods and services at issue are usually offered by specialized companies in their corresponding fields. Furthermore, they satisfy different needs and are normally offered to different end-users. Therefore, the goods and services are dissimilar.

Contested goods in Class 10:

The contested medical clothes are clothing used by the medical staff and patients in hospitals. These goods are different from all the opponent’s goods and services, including clothing in Class 25. The usual commercial origins of the goods, their distribution channels and their sales outlets are normally different. Moreover, they are not in competition. Therefore, the goods and services are dissimilar.

Contested goods in Class 12:

The contested safety belts for vehicle seats; covers (seat) for vehicles; bicycle; golf carts; safety seats for children [for vehicles]; shopping trolleys [carts (Am)]; prams [baby carriages]; baby carriages; strollers; pushchairs; tires, solid, for vehicle wheels; tires for vehicle wheels; goods handling carts; luggage carriers for vehicles are identically contained in the opponent’s lists of goods in Class 12 (including synonyms).

The contested wheelbarrows; two-wheeled trolleys; wheelchairs; trucks (luggage); carts; hand cars; luggage trucks; pucker luggage barrow are included in the broad categories of the opponent’s vehicles, apparatus for locomotion by land (FR No 10 3 774 368). Therefore, they are identical.

The contested goods seats (vehicle); vehicle wheels; bicycle stands; bike bag; perambulator covers (fitted); covers for baby carriages; stroller covers [pushchairs]; pushchair covers; pushchair hoods; casters for trolleys [vehicles] [carts (Am)]; hoods for baby carriages; cigar lighters for automobiles are similar to the opponent’s goods vehicles, bicycles; apparatus for locomotion by land; baby carriages. The relevant public, the usual producers and the distribution channels of the goods coincide. Furthermore, these goods are complementary.

Contested goods in Class 18:

The contested beach bags; travelling bags; bags (garment) for travel; travelling sets [leatherware]; garment bags for travel; pocket wallets; handbags; school satchels or school bags; satchels (school); vanity cases [not fitted]; suitcases; sling bags for carrying infants; backpacks rucksacks; trunks [luggage]; briefcases; shopping bags; umbrellas; card cases [notecases]; passport folder (made by leather); purses; key cases [leatherware]; attaché cases are identically contained in the opponent’s lists of goods in Class 18 (FR No 12 3 912 171; IR 1 129 976; EUTM 5 875 554) (including synonyms).

The contested wheeled shopping bags are included in the opponent’s bags on wheels (FR No 12 3 912 171). Therefore, they are identical.

The contested bags (net) for shopping are included in the opponent’s shopping bags (FR No 12 3 912 171). Therefore, they are identical.

The contested travelling trunks are included in the opponent’s trunks (FR No 12 3 912 171). Therefore, they are identical.

The contested boxes of leather includes, as a broader category, the opponent’s hat boxes of leather (FR No 12 3 912 171). 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 bags for sports or sports (bags for); bags for climbers; tool bags of leather [empty]; bags for campers; pouches, of leather, for packaging; bags [envelopes, pouches] of leather, for packaging are highly similar to the opponent’s bags on wheels (FR No 12 3 912 171), as they have the same nature and purpose, producers, distribution channels and relevant public. They can be in competition.

The contested boxes of leather board are highly similar to the opponent’s hat boxes of leather (FR No 12 3 912 171), as they have the same nature and purpose, producers, distribution channels and relevant public. They can be interchangeable or in competition.

The contested file folder (made by leather); cheque folder (made by leather) are similar to wallets, key cases, purses not of precious metal covered by the earlier marks, which are often made of leather. They all are small or portable leather containers for enclosing something, used for carrying or safekeeping. Therefore, they have the same nature and purpose. They are provided by the same manufacturers and sold in the same shops.

The contested leather mat are similar to the earlier wallets, purses not of precious metal and briefcases as they are sold by the same producers through the same distribution channels to the same consumers.

The contested frames (handbag); handles (suitcase); suitcase handles; umbrella sticks; umbrella handles; umbrella or parasol ribs are parts of handbags, suitcases, umbrellas and parasols. The fact that one product may be used for manufacturing another is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned components are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from all the other opponent’s goods and services. Therefore, these goods and services are dissimilar.

The same can be said about the contested straps (leather); straps of leather [saddlery]; leather shoulder belts; leather straps or leather thongs; laces (leather); belts (leather shoulder). Although some of them can be parts of the opponent’s goods and services that is not sufficient to find similarity between them. They have different purposes, sales outlets, manufacturers and relevant publics. Therefore, they are dissimilar.

Contested goods in Class 20:

The contested cupboards; chairs [seats]; easy chairs; hairdressers' chairs; high chairs for babies; benches [furniture]; benches (work); chests of drawers; racks [furniture]; magazine racks; bottle racks; armchairs; beds; screens [furniture]; massage tables; counters [tables]; tables; tables of metal; stools; bamboo woodworking art; bamboo basket; baskets (fishing); bread baskets (bakers); baskets, not of metal; boxes (nesting) for household pets; nesting boxes for household pets; nesting boxes; playpens for babies; cradles; infant walkers; cushions; magnetic pillow; air pillows, not for medical purposes; down leather pillow; jade pillow; pillows; air mattresses, not for medical purposes; mattress (straw); mattresses (spring); mattresses; mattresses; garment covers [storage]; clothes hooks, not of metal; bamboo arts and crafts; dressing tables; plot table; hooks, not of metal, for clothes rails; rings (curtain); curtain hooks; curtain rods; umbrella stands; ladders of wood or plastics; slatted indoor blinds; blinds (slatted indoor); bedsteads [wood]; hangers (coat); furniture; furniture of metal; seats of metal; sofas; coat hangers; beds (hospital); seats; furniture (office); office furniture; curtain holders, not of textile material; rollers (curtain); curtain rollers; bassinettes; shelves for filing-cabinets [furniture]; washstands [furniture]; dinner wagons [furniture]; desks [furniture]; furniture (school); furniture shelves; book rests [furniture]; trolleys for computers [furniture]; trolleys [furniture]; desks; writing desks; tea carts; filing cabinets; cabinet work; cabinets (medicine); tea trolleys; TV set frame; bamboo curtains; bamboo; flower-pot pedestals; wood ribbon; keyboards for hanging keys; Jewellery cases [caskets], not of precious metal; footstools; floating containers, not of metal; trays, not of metal; pallets, not of metal (loading); taps for casks [not of metal]; clips (cable and pipe) of plastics; cable or pipe clips of plastics; handles, not of metal (knife); stairs (mobile boarding), not of metal, for passengers; cork bands; mats, removable, for sinks; antlers (stag); honeycombs; bracelets (identification), not of metal, for hospital purposes; bed casters, not of metal; towel dispensers, fixed, not of metal; dispensers (towel), not of metal, fixed; furniture fittings, not of metal; casters, not of metal (furniture); furniture partitions of wood; locks [other than electric], not of metal; fittings, not of metal (window); woven timber blinds [furniture]; curtain rails; wall plugs, not of metal; curtain tie-backs are identical to the opponent’s goods either because they are identically contained in the opponent’s lists of goods (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested display boards are highly similar to the opponent’s display stands (FR No 12 3 912 171). These goods are of similar nature and purpose. They are directed at the same end consumers and will be distributed through the same commercial channels.

The contested sleeping sack; bags (sleeping) for camping have some points in common with the opponent’s bedding (except linen) (FR No 12 3 912 171) since they may share the same purpose, are manufactured by the same undertakings and distributed through the same channels. Furthermore, they are addressed at the same end consumers. It follows that they are similar.

Contested goods in Class 21:

The contested make-up removing appliances, electric are highly similar to the opponent’s articles for cleaning purposes (IR 613 780). These goods have the same purpose. They can have the same producer, end user and distribution channels. Furthermore, they are complementary.

The contested straws for drinking have a nature, purpose and method of use, which are different from those of all the opponent’s goods and services. In addition, the goods under comparison are not in competition. Moreover, the usual commercial origins of the goods, their distribution channels and their sales outlets are normally different. Therefore, the goods are dissimilar.

Contested goods in Class 24:

The contested plastic bedsheet mosquito nets are included in the broad category of the opponent’s mosquito nets (IR No 1 129 976). Therefore, they are identical.

None of the opponent’s goods and services can be considered similar to the remaining contested goods in this class, namely bed covers of paper; coverings of plastic for furniture. These goods do not have the same nature, purpose or method of use. Moreover, they do not have the same end users or distribution channels and it is unlikely that they would be manufactured by the same undertakings. Therefore, the contested goods are dissimilar to the goods and services of the earlier rights.

Contested goods in Class 25:

The contested leather (clothing of imitations of); dust coat; clothing; teddies [undergarments]; frocks; overalls; beach clothes; waistcoats; ultra-red clothes; collar protectors; gabardines [clothing]; jerseys [clothing]; bodices [lingerie]; corsets [underclothing]; tights; detachable collars; trousers; togas; combinations [clothing]; breeches [for wear]; underpants; drawers [clothing]; jackets (stuff) [clothing]; camisoles; leather (clothing of) or clothing of leather; furs [clothing]; pelisses; clothing of leather; liveries; cheong-sam; jackets [clothing]; coats (top); skirts; sweaters; brassieres; coats; photographing vest; gowns (dressing); pyjamas or pajamas (am); suits; pullovers; children's garments; outerclothing; sweat-absorbent underclothing [underwear]; corselets; cuffs; linen (body) [garments]; shoulder wraps; down cloth; bath robes; sports jerseys; knitwear [clothing]; paper clothing; uniforms; tee-shirts; singlets; vests; dressing gowns; pants; petticoats; shirts; underwear; underclothing; ready-made clothing; parkas; slips [undergarments]; fishing vests; underclothing (anti-sweat); linen (body) [garments] or underclothing or underwear; stuff jackets [clothing]; leather (clothing of); pajamas (AM); child cloth; singlets or sports jerseys; special functional dress (magnetism, infrared); babies'pants; layettes [clothing]; bibs, not of paper; babies' diapers of textile; napkins (babies) of textile; wet suits for water-skiing; motorists' clothing; trunks (bathing); bathing trunks; cyclists' clothing; judogi; wrestling dress; clothing for gymnastics; bathing drawers; bathing caps; bathing suits; waterproof clothing; rain-cloak; raincoat (raincap, shawl); costumes (masquerade); masquerade costumes; saris; dance cloth; theatrical costume; yangge dress; boots (ski) or ski boots; mountain climbing shoes; shoe for mountain climbing (with metal nails); track shoe; gymnastic shoes; running shoe; football shoes; studs for football boots [shoes]; football boots; football boots [shoes] (studs for); goloshes; spats; beach shoes; sandals; wooden shoes; trouser straps; galoshes; slippers; lace boots; shoes; footwear; inner soles; gaiters; boots; rain boot; bath sandals; bath slippers; sports shoes; boots for sports; half-boots; esparto shoes or sandals; hoods [clothing]; hats; headgear for wear; caps [headwear]; miters [hats]; skull caps; headbands [clothing]; berets; top hats; bamboo hat; ear muffs [clothing]; wedding dresses; wedding gowns; footmuffs, not electrically heated; hosiery; sock suspenders; trouser socks; socks; stockings (sweat-absorbent); leggings; stockings; garters; stocking suspenders; socks; mittens; muffs [clothing]; gloves [clothing]; neck ties; tie; scarf; veils [clothing]; pelerines; collars [clothing] or shoulder wraps; shawls; mantillas; fur stoles; turbans; scarfs; pocket squares; ascots; bandanas [neckerchiefs]; boas [necklets]; belts [clothing]; straps (gaiter); strap; belts (money) [clothing]; girdles; braces for clothing [suspenders] or suspenders; sashes for wear; wedding veil; maniples; chasubles; wimples; caps (shower) are identical to the opponent’s clothing, headgear for wear, women’s and children’s footwear except orthopaedic footwear; slippers, boots, beach shoes, sports footwear for women and children; shoes either because they are identically contained in the opponent’s lists of goods (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested insole is similar to the opponent’s footwear for women and children (except orthopedic footwear). The goods can have the same producer, end user and distribution channels. Furthermore, they are complementary.

The contested Pockets for clothing; Jumpers [shirt fronts]; Dress shields; Chemisettes [shirt fronts]; Yokes (Shirt); Shields (Dress); Shirt yokes; Shirt fronts; Ready-made linings [parts of clothing]; Linings (Ready-made) [parts of clothing]; Shoes (Non-slipping devices for); Footwear uppers; Shoes (Iron fittings for); Soles for footwear; Fittings of metal for shoes and boots; Shoes (Heelpieces for); Heels; Footwear (Tips for); Uppers (Footwear); Shoes (Welts for); Welts for boots and shoes; Boot uppers; Boots (Heelpieces for); Boots (Welts for); Frames (Hat) [skeletons]; Peaks (Cap); Stockings (Heel pieces for) are all parts of clothing, headgear and footwear. The mere fact that they are used for manufacturing final products that belong to Class 25 is not enough to render them similar to the opponent’s goods in this class. They are usually destined for undertakings that manufacture the end product and not for the general public and usually they do not have the same distribution channels. Furthermore, they do not share points of contact under the relevant Canon criteria with the other opponent’s goods and services. Hence, they are dissimilar to all the opponent’s goods and services.

Contested goods in Class 26:

The contested hair colouring caps are similar to the opponent’s dyes and hair dyes in Class 3 (FR No 13 3 998 456). This is because, despite the different nature, all these goods are used in the same area of hair care and hair styling. Consequently, they share the same purpose and are addressed to the same public. They can be found together in the same shops (specialised shops for hairdressers and hair care, or adjacent shelves of the supermarket) and can also be complementary. It is not rare for these products to be produced by the same undertaking.

The contested hair-curlers, electrically heated; collar flower; Suspenders (Fastenings for) have a nature, purpose and method of use, which are different from those of all the opponent’s goods and services. In addition, the goods and services under comparison are not in competition. Moreover, the usual commercial origins of the goods and services, their distribution channels and their sales outlets are normally different. Therefore, the goods and services are dissimilar.

Contested goods in Class 28:

The contested swimming belts; swimming jackets are included in the broad category of the opponent’s sporting articles not included in other classes (IR No 373 519). Therefore, they are identical.

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 (to different degrees) are directed at both the general public and at professionals. The attention paid by them during the purchase of these goods is deemed to vary from average to higher than average depending on the specialised nature of the goods, the frequency of purchase and their price.

The signs

PIERRE CARDIN

Earlier trade marks

Contested sign

The relevant territory is the European Union, the United Kingdom, Italy, Cyprus, Malta, Republic Czech, Poland, Hungary, Portugal, France, Germany, Bulgaria, Denmark, Finland and Sweden.

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 marks are the following: word marks PIERRE CARDIN and a figurative sign made up of the words PIERRE CARDIN underlined by a decreasing zig-zag horizontal line terminating in a solid black circle.

The contested mark is a figurative sign consisting of the words ‘paris cardin’ written in fairly standard bold lower case letters, in white with a black outline. Above these words is a red figurative element; it is square in shape and will be perceived as a device formed of two highly stylised letters, ‘p’ and ‘c’, by at least part of the relevant public.

The earlier marks have no elements that could be considered clearly more dominant than other elements.

The figurative element of the contested trade mark overshadows the verbal elements of the mark by virtue of its central position and size. The figurative element is the visually dominant element of the contested trade mark.

The element ‘PARIS’ of the contested sign will be associated with the capital of France. In relation to the relevant goods it is unlikely that it will be perceived as an element indicating the commercial origin of the goods, but rather as an indicator of their geographic origin. Therefore, any level of distinctiveness in trade mark sense can hardly (if at all) be attributed to this element. The public understands the meaning of the element and will not pay as much attention to it as compared to the other more distinctive elements of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

As regards the figurative earlier mark and the public who will not recognize the letters, ‘p’ and ‘c’ in the contested sign, the signs are composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal elements PIERRE CARDIN in the earlier marks and CARDIN in the contested mark are more distinctive than the figurative elements.

Visually, the signs are similar to the extent that they contain the word ‘cardin’, placed in the same position in all the marks. However, they differ in their first word elements, ‘PIERRE’ in the earlier marks and ‘paris’ in the contested sign (although these are almost of the same length and both start with the letter ‘p’). The signs further differ in the figurative elements and typeface; the typeface of the contested mark however, is not highly stylised.

The impact of the figurative component in the contested mark and in the earlier marks is of a limited nature. The figurative element is not set out in such a specific and original way that it would help consumers keep these elements in mind or somehow contribute in distinguishing between the signs. Further, it should be borne in mind that where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (15/12/2009, T-412/08, ‘Trubion’, EU:T:2009:70, § 45 and the case-law cited therein). In the case at hand there is no reason to deviate from this principle. The relevant public will perceive the figurative elements as decorative components and not as an element indicating the commercial origin of the goods.

Further, beyond the usual case in which the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case, the composite mark and that other mark may be considered to be similar (01/07/2009, T-16/08, Center Shock, EU:T:2009:240, § 44 and case-law cited therein and 12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 33 and the case-law cited therein, confirmed in order 22/01/2010, C-23/09 P, Ecoblue, EU:C:2010:35, § 45). The present case contains a relevant resemblance to these cases, namely that the words ‘paris cardin’ of the mark applied for retain an independent distinctive role within the mark even if the figurative component were seen as the dominant element.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‘car-din’, present identically in all the signs. The pronunciation differs in the syllables ‘pier’ or ‘pie-rre’ of the earlier signs and in ‘pa-ri’ or ‘pa-ris’ of the contested mark (although these elements both have the same first sound, ‘p’). Although part of the relevant public will perceive the letters ‘p’ and ‘c’ in the figurative element of the contested sign, it is unlikely that these letters would be pronounced, because they are highly stylised.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the word ‘PIERRE’ is a common French male first name and will be perceived as such by part of the public in the relevant territory; the accompanying word ‘CARDIN’ will be perceived as a surname by part of the relevant public. The word ‘paris’ of the contested mark will be associated by the public in the relevant territory with the capital of France. As far as the figurative element of the contested marks is concerned, at least part of the relevant public will associate it with the letters ‘p’ and ‘c’, standing for ‘paris’ and ‘cardin’. The figurative elements of the earlier marks will be perceived as geometrical forms by the public. Since the signs will be associated with a similar meaning by the part of the public who perceives the word ‘cardin’ as a surname in the signs, the signs are conceptually similar to an average degree.

Although the beginning of the mark is normally the part to which the consumer attaches more importance, that argument cannot hold true in all cases (23/10/2015, T-96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 35 and the case-law cited) and does not, in any event, cast doubt on the principle that the assessment of the similarity between the marks must take account of the overall impression created by them.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar overall.

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

Distinctiveness of the earlier marks

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

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

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks 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.

Global assessment, other arguments and conclusion

The contested goods are partly identical and similar to various degrees and partly dissimilar to the goods on which the opposition is based. The distinctiveness of the earlier marks is normal.

The signs are conceptually similar for at least part of the public in the relevant territory, because they may both be perceived as referring to the surname ‘cardin’. Furthermore, they are visually and aurally similar to the extent that they both contain the word, ‛cardin’, with all the signs having two word elements. The signs differ in their first words, ‘PIERRE’ versus ‘PARIS’; however, these elements are almost of the same length, and both start with the letter ‘p’, which are circumstances that help to create an overall degree of similarity between the signs. Furthermore, it was established that the verbal element ‘PARIS’ by conveying a geographical origin message only, its distinctiveness is in any case weak, if not non-existent. For all these reasons its impact is very limited in the assessment of likelihood of confusion.

When conflicting signs contain the same surname the outcome will very much depend on the perception of the surname in the relevant territory. The less common a surname is, the more likely consumers will be to focus their attention on it. In the present case, the surname ‘Cardin’ is not common in the relevant territory and therefore it can be considered to have a particular relevance in the global assessment.

In any event, and particularly with regard to the part of the public that does not perceive the signs as referring to first and family names, it should be pointed out that although the first part of a sign is generally the part that primarily catches the consumer’s attention and has, therefore, a significant influence on the general impression made by the mark, this is not a fixed rule and the outcome depends on the individual circumstances of the case. In the present case, as explained above, the signs create an overall degree of similarity due to their coinciding element and similar structure, and the fact that the element they have in common is in the second position in the signs is therefore not particularly significant.

As regards the differences resulting from the figurative representation of the contested mark and of the earlier marks, and as seen above, the figurative representation of the contested mark has less impact when assessing the likelihood of confusion between the marks at issue.

Finally, the degree of attention of the relevant public is average to higher than average. The average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (see judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 26). However, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks.

Therefore, taking into account all the relevant circumstances of the case, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the overall degree of similarity between them resulting from their significant visual, aural and, for part of the public, conceptual coincidences, and that the relevant public may believe that the goods, even those that are similar to only a low degree, come from the same undertaking or at least economically-linked undertakings.

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if it does not confuse the two signs directly, believe that they are related.

In the present case, the public may think, for instance, that the applicant’s mark is a sub-brand or a variant of the opponent’s earlier signs.

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 partially well founded on the basis of the opponent’s registrations.

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

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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive reputation as claimed by the opponent and in relation to identical and similar goods. 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 goods, 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 also based its opposition on the following earlier trade marks:

International Registration No 803 664 PIERRE CARDIN EVOLUTION for goods in Class 25 namely : Clothing; knitwear; body linen; underwear; pyjamas, dressing gowns, sweaters, skirts, dresses, trousers, jackets, coats, waterproof clothing; shirts, layettes, textile nappies, disposable nappies; neckties; neckscarves, scarves; belts, gloves (clothing); braces; headwear, hats, caps, footwear; socks, hosiery, tights, shoes (excluding orthopaedic shoes), slippers, boots; beach footwear, ski boots; sports shoes; swimming trunks and swimming costumes, sportswear (excluding diving clothing).

European Union trade mark registration No 9 761 073, PIERRE CARDIN STYLE, which was filed on 24/02/2011 for goods in Class 3 namely: Bleaching, laundry, cleaning, polishing, scouring and abrasive preparations; Perfumes, eaux de toilette; Deodorants for personal use (perfumery); Essential oils; Soaps; Cleansing milk and preparations for toilet purposes; Cosmetics; Make-up and make-up removing preparations; Cosmetic products and preparations for skincare, for slimming, for the bath and for sun-tanning purposes; Cosmetic sets; Beauty masks; Nail varnish; Lipsticks; Dentifrices; Mouth washes, not for medical use; Hair lotions and haircare preparations; Shampoos; Hair colourants and dyes; Hair removal preparations; Shaving preparations, shaving soaps; Cotton wool and cotton tip sticks for cosmetic purposes; Tissues impregnated with cosmetic lotion.
European Union trade mark registration No 8 634 594, , which was filed on 22/10/2009 for goods in Class 3 namely: Cleaning preparations; soaps; perfumes; toilet waters; essential oils, cleansing milk and oils for toilet purposes; cosmetics, hair care preparations; lotions, lacquers and gels for the hair; lotions and milks for cosmetic use, after shave lotions; nail varnish; cosmetic preparations for bathing and for sun-tanning purposes; sun-tanning preparations (cosmetics).
European Union trade mark registration No 8 534 216,, which was filed on 08/09/2009 for goods in Class 3 namely: Cleaning preparations, soaps; perfumes; toilet waters; essential oils, cleansing milk and oils for toilet purposes; cosmetics, hair care preparations; lotions, lacquers and gels for the hair; lotions and milks for cosmetic use, after shave lotions; nail varnish; cosmetic preparations for bathing and for sun-tanning purposes; sun-tanning preparations (cosmetics).

European Union trade mark registration No 7 138 373, PIERRE CARDIN COLLECTION, which was filed on 06/08/2008 for goods in Class 3 namely : Bleaching, laundry, cleaning, polishing, scouring and abrasive preparations; perfumes; toilet waters; deodorants for personal use (perfumery);essential oils, soaps; cleansing milk and preparations for toilet purposes; cosmetics, make-up and make-up removing preparations cosmetic products and preparations for skin care, for slimming, for bathing, for sun-tanning purposes; cosmetic sets; beauty masks; nail varnish; lipsticks; dentifrices; mouth washes, not for medical use; hair lotions and haircare preparations; shampoos; hair colourants and dyes; hair removal preparations; shaving preparations, shaving soaps; cotton wool and cotton tip sticks for cosmetic purposes; tissues impregnated with cosmetic lotion.

Since these marks cover the same scope of goods (although with a slightly different wording), the outcome cannot be different with respect to goods for which the opposition has already been rejected. For the sake of completeness, the Opposition Division finds that the goods covered by these earlier rights in Classes 3 and 25 are clearly different to those for which the opposition has already been rejected. These goods do not share the same nature, producers, end-users or distribution channels. Moreover, they serve a different purpose and neither complementary nor in competition. Therefore these goods are found dissimilar. Therefore, the outcome cannot be different; no likelihood of confusion exists with respect to those goods.

As similarity of goods 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.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods 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.

Given the above, it is unnecessary to examine the evidence of use filed by the opponent for the International Registration No 803 664.

REPUTATION – ARTICLE 8(5) EUTMR

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

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

The signs must be either identical or similar.

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

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

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

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming reputation, describing the evolution of the opponent’s company and goods and presenting several submissions and evidence to prove such a reputation, the opponent did not submit any facts, meaningful arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. Indeed, the argumentation in its submissions is related to only the existence of reputation of the earlier marks and the likelihood of confusion between the signs.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or

similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed

with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade marks to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character

or repute of the earlier trade marks (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have filed submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie

conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark

would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade marks. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this

is insufficient, as seen above.

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 restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) EUTMR.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS Richard BIANCHI Lucinda CARNEY

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.

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