OPPOSITION No B 2 060 385

Ffi Global S.R.L., Via dell'Artigianato, 2, 36064 Mason Vicentino, Italy (opponent), represented by Barzanò & Zanardo Roma S.P.A., Via del Commercio, 56, 36100 Vicenza, Italy (professional representative)

a g a i n s t

Hervé Pidou, 1 rue Gianotti, 13100 Aix En Provence, France and Gil Capaldini, 167 rue Paradis, 13006 Marseille, France (applicants), represented by Legabrand, 13 Rue Roux de Brignoles, 13006 Marseille, France (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 060 385 is partially upheld, namely for the following contested goods:

Class 18:        Handbags, shoulder bags, rucksacks, beach bags, bags for sports, pouches, school satchels, school bags, slings for carrying infants, bags, pocket wallets, purses, key cases, briefcases, card cases.

Class 25:        Clothing, namely coats, blouson jackets, waterproof clothing, rain ponchos, parkas, suits, jackets, overalls, trousers, jeans, shorts, bermuda shorts, dresses, skirts, petticoats, T-shirts, tanktops, sweaters, pullovers, shirts, waistcoats, sweatshirts, sweatpants, leggings, track jackets, bathing suits, beachwear, underclothing for women, underwear, pyjamas, dressing gowns, bath robes, socks, tights, scarves, sashes for wear, stoles, neckties, bibs of textile, belts, suspenders, headbands, gloves, headgear, caps (headwear), footwear, beach shoes, ski boots or boots for sports, rain boots, wooden shoes, shoes, slippers.

2.        European Union trade mark application No 10 864 015 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 10 864 015 . The opposition is based on European Union trade mark registration No 285 023 ‘Free Soul’ and Italian trade mark registration No 1 085 322. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION- Italian trade mark registration No 1 085 322

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is 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 will 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 must 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.

In the present case, the notice of opposition was accompanied by an extract from the data base of the Italian Patent and Trade Mark Office, concerning the registration of the earlier Italian mark, accompanied with a translation. The application date pointed on the excerpt is 14/04/2003. According to the practice of the Italian Patent and Trade Mark Office, the registration of a trade mark can be renewed 10 years from the filing date (being 14/04/2003 in the current case).

On 22/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material, namely until 10/10/2014. After extension, granted by a request of the opponent, this time limit finally expired on 10/12/2014.

Pursuant to Rule 19(2)(a)(ii) EUTMIR if the opponent has submitted a certificate of registration (or an excerpt from an official data base) but the registration is due to expire before the expiry of the time limit for substantiation, it must file a renewal certificate or equivalent document in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof has been given to it to substantiate its opposition. Therefore, in the case at issue within the substantiation period abovementioned the opponent had to submit a document showing that the period of protection of the trade mark extends beyond 10/12/2014.

The opponent did not submit any further evidence concerning the substantiation of the earlier Italian trade mark within the period abovementioned.

The opponent submitted the required evidence on 16/08/2016, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

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 will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

The Opposition Division, therefore, will proceed with the examination of the opposition in regard to the earlier European Union trade mark registration No 285 023.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the earlier European Union trade mark registration No 285 023.

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

The contested application was published on 26/06/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/06/2007 to 25/06/2012 inclusive.

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

Class 25:        Clothing, footwear, headgear.

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

On 07/12/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/02/2017 to submit evidence of use of the earlier trade mark. On 13/01/2017, within the time limit, the opponent submitted a response and referred to evidence of use already submitted on 16/08/2016.

The evidence to be taken into account is the following:

• A brand presentation, in English, originating from the opponent and concerning the brand ‘FREESOUL’. It contains information about the creation of the brand and photographs of models wearing clothing, which appear to be excerpts from catalogues. On some of the photos, there are references to what appears to be collection season, such as Spring/Summer 2011. There are also press cuts from magazines, such as ‘Glamour’ (Italy), ‘Yo Dona’ (Spain), ‘Grazia’ (France), on which however the sign is not visible.  
• Photos, undated, depicting inter alia, the following signs  and , placed on labels and clothing.
• 10 Catalogues, in English, dated between fall/winter 2008 and fall/winter 2011-2012 and one catalogue which refers to spring/summer 2012, depicting the following signs: and on the pages and on some of the pieces of clothing. The catalogues show photos of models wearing different pieces of clothing. On some of the catalogues there is an explicit indication (in the end of the catalogue) of the products advertised under the signs specified above (e.g. coats, sweaters, shirts jackets, tops, dresses). The catalogues also provide contact information of the ‘Freesoul Headquarters’ in Italy, as well as some communication addresses in France, Germany, Spain and Greece.
• A video cut from ‘fashiontv’, mentioning the brand ‘Free Soul’ as ‘a street wear move’.
• Press cuttings from magazines and printouts, mostly dated between 17/07/2009 and 06/2012, in French, Spanish, Italian and German. The sources include, inter alia, ‘Cosmopolitan’, ‘Mia’, ‘Fashion’, ‘Pambianco week’, ‘Sport&Street’, ‘Glamour’, ‘Marie Claire’, www.fashiontimes.it and www.style.it. ‘Free Soul’ is depicted in regard to jeans, blousons, coats, trousers.  
• Printouts from www.yutsai.com, bearing only the printing date (07/04/2015). It is explained by the opponent that these are from the official website of Mr. Yu Tsai, a photographer who prepared the catalogues of the ‘FREE SOUL’ trade mark. The printouts contain some images, inter alia, one of a model showing clothing with the sign ‘FREESOUL’ underneath.
• 24 Invoices, dated between 08/02/2008 and 18/04/2012, in German, English, Italian, issued by ‘Eldo s.r.l.’ to companies in Germany, Italy, France. The invoices depict the following sign  in the top part of the invoice. The invoiced goods are T-shirts, jackets, jeans, shirts, skirts, trousers, scarfs and sweaters. The invoiced amounts vary between above EUR 300 and above EUR 75 000. There are also two invoices, dated outside the relevant timeframe.
• A contract between ‘Eldo s.r.l.’ and another company, signed on behalf of ‘Eldo s.r.l.’ on 09/02/2011 and entitled ‘Corners agreement’ (in English and French). The contract concerns setting up a space (‘corner’) where the goods with the brand ‘Freesoul’ will be sold, the way they are arranged and additional conditions concerning the sale of the products; and three invoices (two dated in 2011 and one dated outside the relevant timeframe), issued to the opponent for the provided to the opponent services for trade show participation and setting up ‘corners’.

Preliminary remarks

The submitted invoices are issued by a company, named ‘Eldo s.r.l.’, which is also the name of the legal entity who has submitted the notice of opposition (the former opponent). However, during the course of the current proceedings, a change in the opponent (from ‘Eldo s.r.l.’ to ‘Ffi Global S.R.L.’) has been requested and duly registered as regard the earlier EUTM. It is, therefore, concluded that the evidence mentioned originate from the opponent.

Furthermore, part of the evidence (part of the catalogues) refers to an entity called ‘Freesoul Headquarters’.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. 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). It can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by this other entity was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, some of the invoices and depictions of clothing on press cuttings, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant further argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The submitted invoices, press cuttings and catalogues show that the place of use is the European Union. This can be inferred from the languages of the documents (English, French, Spanish, Italian, German), the currency mentioned (EUR) and some addresses in Italy, France and Germany. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

The submitted photographs are undated. However, they reflect the information (the signs in regard to pieces of clothing) provided through the evidence which are clearly dated in the relevant timeframe. Therefore, the photographs are also considered related to the relevant timeframe.

It is, therefore, concluded that the opponent has proven time of use.

Extent of use

The documents listed above, namely the invoices, the press clips and the catalogues, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices (twenty four within the relevant timeframe) demonstrate invoiced amounts that are significant (between above EUR 300 and above EUR 75 000 per invoice) and they furthermore encompass a continuous period of more than four years. The invoices refer to sales in a number of cities in three different Member States within the relevant territory.

Nature of use

Sign used as a trade mark

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

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods (pieces of clothing) and the opponent, as on all of the submitted invoices the name of the opponent (its predecessor) is clearly indicated, as well as the mark under which the products are invoiced. In the submitted catalogues, the signs depicted above are clearly visible. The Opposition Division considers, therefore, that the evidence shows use of the signs depicted above as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

In the present case, the sign ‘Free Soul’ appears on some of the submitted magazine clips, which clearly show the earlier mark depicted as registered.

The following sign is depicted on the submitted invoices . Furthermore, the signs   , ,  appear on the submitted press articles, photos and catalogues. On these, the earlier sign appears in a rather standard or slightly stylised typeface. On some of them the space separation between the elements ‘Free’ and ‘Soul’ is not so clearly detectable. The fact that the mark has been used in a form that is slightly different from the registration does not alter the distinctive character within the meaning of Article 15(1), second subparagraph, point (a) CTMR, this being a minor difference that does not affect the capacity of the sign to distinguish the goods as coming from the opponent.      

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

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

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

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

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

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

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

In the present case, the evidence proves use only for a variety of pieces of clothing, such as T-shirts, jackets, jeans, shirts, skirts, trousers, scarfs, sweaters, 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 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 trade mark for clothing.

The opponent did not submit any evidence regarding the other goods on which the opposition is based, namely footwear, headgear in Class 25.

Therefore, the Opposition Division will only consider the goods clothing in Class 25 in its further examination of the opposition.

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

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

1. The goods

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

Class 25:        Clothing.

The contested goods are the following:

Class 16:        Posters, albums, almanacs, calendars, notebooks, writing or drawing books, files, catalogues, newspapers, books, magazines, photographs, postcards, letter trays, paper knives, drawing sets, paint bushes, pens, pastels, pencils, drawing instruments, drawing materials, writing instruments, paper sheets, rubber erasers, pencil sharpeners, stationery, office requisites (except furniture), table linen of paper, holders for cheque books, bags of paper or plastics, for packaging.

Class 18:        Leather and imitations of leather, animal skins and hides, coverings of skins (furs), handbags, shoulder bags, rucksacks, beach bags, bags for sports, wheeled shopping bags, shopping bags, net bags for shopping, pouches, school satchels, school bags, slings for carrying infants, wicker baskets, bags, trunks, suitcases, travelling trunks, travelling bags, small wheeled suitcases, garment bags for travel, toiletry cases, vanity cases, pocket wallets, purses, key cases, briefcases, card cases, boxes of leather, bags (envelopes, pouches) of leather, for packaging, hat boxes of leather, umbrellas, parasols, walking sticks, saddlery, collars for animals, leather leashes, leather laces.

Class 25:        Clothing, namely coats, blouson jackets, waterproof clothing, rain ponchos, parkas, suits, jackets, overalls, trousers, jeans, shorts, bermuda shorts, dresses, skirts, petticoats, T-shirts, tanktops, sweaters, pullovers, shirts, waistcoats, sweatshirts, sweatpants, leggings, track jackets, bathing suits, beachwear, underclothing for women, underwear, pyjamas, dressing gowns, bath robes, socks, tights, scarves, sashes for wear, stoles, neckties, bibs of textile, belts, suspenders, headbands, gloves, headgear, caps (headwear), footwear, beach shoes, ski boots or boots for sports, rain boots, wooden shoes, shoes, slippers.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 16

The contested goods include a variety of printed matter, stationery, office requisites, packaging materials, while the opponent´s goods are articles of clothing. The goods in comparison have different nature, purpose and method of use. They have different origins and distribution channels. They are neither complementary nor in competition. It follows that the contested posters, albums, almanacs, calendars, notebooks, writing or drawing books, files, catalogues, newspapers, books, magazines, photographs, postcards, letter trays, paper knives, drawing sets, paint bushes, pens, pastels, pencils, drawing instruments, drawing materials, writing instruments, paper sheets, rubber erasers, pencil sharpeners, stationery, office requisites (except furniture), table linen of paper, holders for cheque books, bags of paper or plastics, for packaging are dissimilar to the opponent´s goods.

Contested goods in Class 18

The opponent’s clothing in Class 25 is used to cover parts of the human body and protect them against the elements. The opponent´s goods are also articles of fashion.

The contested handbags, shoulder bags, rucksacks, beach bags, bags for sports, pouches, school satchels, school bags, bags, pocket wallets, purses, key cases, briefcases, card cases are related to articles of clothing in Class 25. This is because consumers are likely to consider the contested goods as accessories that complement articles of clothing (including for a variety of occasions such as doing sport or going to school) as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of the opponent’s goods to directly produce and market the contested goods. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The contested slings for carrying infants coincide with the opponent’s clothing in producer (e.g. producers of baby products and product for prenatal and baby care), end user and distribution channels. It follows that these are similar to a low degree.

The same link, however, could not be found between the opponent’s goods and the remaining contested goods in Class 18. Leather and imitations of leather, animal skins and hides refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for clothing) 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 raw materials in Class 18 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 the opponent’s goods. These are, therefore, dissimilar to the opponent’s goods.

The contested trunks, travelling trunks are large packing cases or boxes that clasp shut, used as luggage or for storage; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; walking sticks are canes or other staffs used as aids for walking; saddlery, collars for animals, leather leashes, leather laces are equipment used for domesticated animals such as horses and dogs; coverings of skins (furs) are products purposed for covering different surfaces, such as furniture. The nature of these goods is very different from that of clothing in Class 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals, covering of home surfaces versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These are, therefore, dissimilar.

The contested suitcases, travelling bags, small wheeled suitcases, garment bags for travel, wheeled shopping bags, shopping bags, net bags for shopping, wicker baskets, toiletry cases, vanity cases, boxes of leather, bags (envelopes, pouches) of leather, for packaging, hat boxes of leather are items used for carrying things when shopping or travelling; or used for keeping/storing items, such as toiletry; or used for packaging. They do not satisfy the same needs as clothing. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. These are, therefore, dissimilar.

Contested goods in Class 25

The contested clothing, namely coats, blouson jackets, waterproof clothing, rain ponchos, parkas, suits, jackets, overalls, trousers, jeans, shorts, bermuda shorts, dresses, skirts, petticoats, T-shirts, tanktops, sweaters, pullovers, shirts, waistcoats, sweatshirts, sweatpants, leggings, track jackets, bathing suits, beachwear, underclothing for women, underwear, pyjamas, dressing gowns, bath robes, socks, tights, scarves, sashes for wear, stoles, neckties, bibs of textile, belts, suspenders, gloves are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

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

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar, including to a low degree, are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Free Soul
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements of the signs in comparison are not meaningful in certain territories, for example, for the Bulgarian-speaking part of the relevant public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on Bulgarian-speaking part of the public.

The earlier mark is a word mark consisting of the elements ‘Free’ and ‘Soul’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, the use of upper or lower case letters is immaterial. The elements ‘Free’ and ‘Soul’ have no meaning for the relevant part of the public and are, therefore, distinctive.

The contested sign is a figurative sign, consisting of the elements ‘Red Soul’, written in black bold title case letter in a rather standard typeface. The elements ‘Red’ and ‘Soul’ have no meaning for the relevant part of the public and are, therefore, distinctive.

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

Following form the above, conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in the element (and the sound of it) ‘Soul’, present identically in both signs. The signs further coincide in the letters and sounds ‘R-E’, placed however in different positions, namely being the second and the third letters in the earlier mark and respectively, the first and the second letters in the contested sign. The signs differ in the first letter (and sound) ‘F’ and the fourth letter (and sound) ‘e’ of the earlier mark, as well as in the third letter (and sound) ‘d’ of the contested sign. As the typeface of the contested sign is rather standard it does not contribute to the differences between the signs. Reference is made to the conclusions, made above, on the distinctiveness of the elements.

Following from the above, the sings are considered to be visually and aurally similar to an average degree.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

As was concluded above, the contested goods are partly identical, partly similar to different degrees and partly dissimilar to the goods of the earlier mark. The degree of attention paid when choosing the relevant goods will be average.

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

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. It has also been established that the signs are visually and aurally similar to an average degree, due to the coinciding letters and sounds, as specified above. It is further noted that the signs follow the same structure, that is, have the same configuration. The signs have in common their element ‘Soul’, preceded by another element, namely ‘Free’ versus ‘Red’.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). This is also the case in relation to the contested goods found to be similar to a low degree (namely slings for carrying infants) to the opponent’s goods, as they also could be considered as a new line of goods launched under a sub-brand of the earlier mark.

In the light of the foregoing, the degree of similarity between the marks is sufficient to consider that a substantial part of the Bulgarian-speaking public could reasonably believe that the goods found to be identical and similar, including to a low degree, originate from the same undertaking or economically linked undertakings.

In its observations, the applicant refers to previous decisions of the Office to support its arguments that there will be no likelihood of confusion between the signs at issue. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, as the marks compared in the cited decisions are either conveying differing concepts or have an element in common that is of a limited distinctiveness, which is not the case at issue when it comes to the relevant part of the public. Therefore, the applicant’s argument has to be set aside.

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

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, including to a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

André Gerd Günther BOSSE

Irina SOTIROVA

Erkki MÜNTER

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.