OPPOSITION No B 2 582 867

Levi Strauss & Co., Levi's Plaza, 1155 Battery Street, San Francisco, California 94111, United States of America (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

France Angel, 34 Avenue des Champs Élysées, 75008 Paris, France (holder), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 582 867 is upheld for all the contested goods.

2.        International registration No 11 011 588 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 11 011 588. The opposition is based on European Union trade mark registration No 26 708. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 will 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 holder establishes due cause for the use of the contested trade mark.

In the present case, the holder 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.

1. The signs

501
Earlier trade mark	Contested sign

The relevant territory is the European Union. 

The earlier mark is the word mark ‘501’ and the contested sign is the figurative mark ‘ROOM No 501’ written in upper case letters and standard font. The signs have no elements that can be considered more distinctive or dominant than other elements.

Visually and aurally, the signs are similar to the extent that they coincide in the numeral ‘501’ incorporated in both of them. However, they differ in the additional verbal part ‘ROOM’ and in the symbol ‘No’ in the contested sign, which have no counterpart in the earlier mark. However, to the extent that the number ‘501’ will be seen and pronounced in both of the signs, they are considered similar to an average degree.

Conceptually, the public in the relevant territory will perceive the earlier sign as the number ‘501’ and the contested mark only as the number ‘No 501’ for the non-English speakers or as a reference to ‘a room number 501’ by the English-speaking part of the public that understands the verbal element. Consequently, to the extent that the signs will be associated with the same numeral ‘501’ by the non-English-speaking part of the public, they are conceptually similar to a high degree. As to the English-speakers that will further see the concept of ‘a room’, the signs are considered conceptually similar to an average degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar at least to an average degree for all the relevant parts of the public.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the EU was designated in the contested international registration on 25/12/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 16:        Paper, cardboard and goods made from these materials (included in class 16); printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; instructional and teaching material (except apparatus); plastic materials for packaging (included in class 16); playing cards.

Class 18:        Leather and imitations of leather, and goods made of these materials (included in class 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25:        Clothing, footwear, headgear.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim on 27/04/2016. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:

Annex 1: History of the brand – a book by Lynn Downey (LS & Co historian), entitled ‘501® The evolution of the Jean’, 2008, and containing the chronological development of the brand ‘501’, firstly used to designate the new product of jeans launched by the opponent in the 1890s in the US. The annex also contains extracts from the author’s webpage, www.lynndowney.com, with illustrations of other published editions devoted to the opponent’s company Levi’s, as well as extracts showing the availability of some of the editions on the opponent’s official page, www.levistrauss.com. A highlight is made by the opponent with respect to 1986, when the first series of TV commercials featuring the brand ‘501’ were released in Europe. Another reference in made in relation to an article published by the Time Magazine, in 2000, that names the 501® jeans ‘The clothing piece of the 20th century’. Other references throughout the opponent’s company history demonstrate different appearances of the brand in relation to jeans in different European Union Member states such as Belgium (Brussels), France (Paris), Poland (Warsaw) and Czech Republic (Prague), Spain, etc.

Annexes 2, 3 and 4: Print advertisement – featuring the opponent’s brand ‘501’, mostly affixed on jeans, throughout the relevant period, in particular between 1990 and 2009. According to the opponent, the advertisements concerned the territory of Europe, in particular Italian posters have been submitted and were to be seen in the opponent’s official outlets and in public spaces such as advertising pillars and bus shelters and in magazines. The opponent particularly refers to Annex 4, including anti-counterfeiting advisement materials, devoted to its core brands, inter alia, the brand ‘501’, in particular:

• Una leggenda che difenderemo con i denti in Italy with a provided translation as ‘A legend that we will defend with our teeth’, 1993;
• Hands off in Benelux, 1997-1998, with publications in national magazines such as ‘Textilia’ and ‘Jeans Cult’ in the Netherlands and ‘Texbel’ and ‘Label’ in Belgium.

Annex 5: TV Advertisement (submitted on DVD) – containing 18 commercials featuring the opponent’s jeans ‘501’ throughout the years, in particular some of the following: Launderette (1985), Entrance (1987), Fridge (1988), Pick-up (1989), Taxi (1994), Clayman (1995), Washroom (1995/96), Mermaids (1996/97), etc. As the opponent indicates, most of these commercials have been awarded (Gold or Silver) at national or international advertising competitions.  

Annex 6: Articles with references – a copy of an article, entitled ‘Historic overview of advertising’, published in December 1998 at Eureka!, the Levi Strauss intranet; the article together with an illustrated summary gives information about the commercials referred to in Annex 5. The Opposition Division notes that the advertising activity of the opponent in European Union countries dates from the 1985 and, as highlighted again in the excerpt, some of the commercials have won national or international awards, for instance Gold Irish Advertising Award – TV, Gold British TV Advertising Awards, Gold Lion Cannes, Eurobest TV Euro Awards TV, GB National Award TV, etc.  

Annex 7: Articles with references – extracts from articles published at the British magazine Campaign and demonstrating the popularity of the opponent’s commercials among the public and in the advertising sector, in particular ‘Forever in Blue Jeans’, 1998; ‘Top European Clients’, 1997, where the opponent is ranked first out of ten; ‘Levi’s the Golden Decade’, 1993 and ‘Levi’s ‘laundrette’ by Bartle Bogle Hegarty, published in April, 2009, that reads ‘The laundrette commercial, promoting Levi’s classic 501s, was the breakthrough. […] As for Levi’s sales, they had soared by 800 per cent within a year of the 501s re-launch.’ Another article, entitled ‘Adwatch: Levi’s speaks out about its 501 range for the first time’, is published at www.marketingmagazine.co.uk and reads, as pointed out by the opponent, ‘Since Nick Kamen’s unforgettable strip in the 1985 ‘Launderette’ ad, accompanied by Marvin Gaye’s I Heard It Through the Grapavine, activity for Levi 501s has been synonymous with music.’  

Annex 8: Catalogues – extracts from catalogues issued between 1987 and 1996 and featuring the opponent’s mark ‘501’. As may be seen, the clothing pieces bearing the mark ‘501’ are considered among the high class products of the opponent’s company (‘Red Tab’). Furthermore, these catalogues have been distributed, inter alia, in different European Union countries such as the UK, Benelux, Greece, Germany, Italy, France, etc.

Annex 9: Outlets and retail – Extracts from the official online store of the opponent www.eu.levi.com, where, among others, also the products of the brand ‘501’ are available for purchase. As may be noticed, the opponent’s products under the brand ‘501’ further differentiate in various lines of products such as ‘501® Series’, ‘501® CT’, ‘501® Shrink-to-fit’, ‘501® Original’, as well as extracts from other online retailers’ websites such as www.rueducommerce.fr, www.jeansshop.com, www.preloved.co.uk, www.gumtree.com, www.herrenausstatter.de, www.asos.de, www.galeria-kaufhof.de, www.usc.co.uk, www.amazon.de, www.zalando.de, www.otto.de, etc. It may be seen among the evidence that, apart from denim cloths, the opponent’s trade mark ‘501’ is recently also used in relation to other type of clothing products, for instance hats and t-shirts,   or .

Annex 10: Books – extracts from various independent sources, in particular books, containing references to the opponent’s brand ‘501’, for instance the following:

• Levi Strauss History, E.Hannouille & N.Graveline, Minerva, 1992;
• The Blue Revolution, Sportswear International, 1992-1993;
• Le Jean – Toile de fond de l’histoire americaine, Regine Van Dammen, Casterman, 1991;
• Jeans des heros, Lhote/Audigier, 1992;
• ‘Chic & Toc, le vrai livre des contrefaçons’, Brodbeck, Mongibeaux, 1990 with a reference to the jeans line ‘501’ as a best-seller.
• Identity design that works, secrets for successful identity design, Cheryl Dangel Cullen, Rockport Publishers, 2003;
• A cultural History of an America Icon, James Sullivan, Gotham, 2006, with the following reference: ‘But two years later the actor [Marlon Brando] gave Levi Strauss &Co the best unsolicited publicity a business could imagine when he and his fellow motorcyclist wore the company’s trademark 501s throughout The Wild One [film]’;
• The Jeans Encyclopaedia of Legend, Past and Present, Sportswear International, 1995, with an article devoted to the opponent’s jeans model ‘501’;
• The Denim Bible, Jeans Encyclopaedia II, Sportswear International, 1995, containing again an article related to the opponent’s mark; 
• Quintessence. The quality of having ‘it’, Black Dog & Leventhal Publishers, 2001, with a reference to Levi’s Jeans, especially the products under ‘501’ being manufactured for more than 127 years.

Annex 11:  Press articles and online presence – containing various references to the opponent’s brand from independent sources in the territory of the European Union. The opponent also provides the necessary translations in English, where applicable; in particular the following documents have been demonstrated:

• Levi’s contre-attaque sur tous les fronts (meaning Levis counter-attacks on all sides) by Clotilde Briard, published on 19/01/2005 at Les Echos, reading that ‘the brand develops a new upscale range, invests in its mythic jeans, the 501, its offer for women and its distribution.’
• Levi’s Coco, published on 01/04/2009 at Tendances de Mode (www.tendances-de-mode.com), where the opponent’s brand is referred to as ‘an internationally known trade mark’ and the article reads further ‘The 501 is on any trendy thing the world has, from the rockers to Marlon Brando via Andy Warhol: Levi’s is at the top of its glory’.
• Levis, le jeans de toutes les générations à l’histoire légendaire,  published at Glamour France, www.glamourparis.com.
• Levi’s 501 – Die älteste, die bekannteste und die meistgetragene Jeans der Welt, published at www.bebasic.ch. A remark has to be made here as regards the origin of the article, namely from a Swiss media; since the article is from an online source, it may target, inter alia, the remaining German-speaking part of the public in the territory of the European Union, in particular Austria and Germany.
• Levi’s, published at www.keymarks.be, on 01/03/2010, where 501 jeans are referred to as ‘legendary’.
• Levi’s, published at www.elle.be, on 25/05/2009, with a reference to the opponent’s product as ‘[…] you can find all models and all cuts, from the classical to the more trendy: slim, bootcut, superskinny, slim fit, straight, and, of course, the unsurpassed 501.’
• Freund 501, by Elna Untermöhle, published at Spezial, on 07/1999.
• Kult und Klassiker: Die Levis 501, published at www.der-mann.net on 08/06/2011, reading the following: ‘Nowadays the Levi’s 501 is still a golden oldie among jeans trousers and is a stylish must-have for every jeans-wardrobe.’
• Eine Hose für den Goldrausch, published at Focus Online (www.focus.de), on 19/03/2007, reading the following ‘The original version of these trousers, the Levi’s 501, is a blockbuster since 120 years. […] To date, Levi Strauss & Company is one of the largest jeans manufacturers and the model Levi’s 501 probably the most famous and most jeans in the world.’
•  Levis 501 Jeans Informationen, published at www.jeans-one.de, reading the following: ‘The original! The Levi’s 501 is not only a trouser but a legend which adapted to the challenges of the past centuries in a unique way […]. Hence the Levi’s 501 is one of the oldest exemplars ever produced by Levi Strauss.’
• Levi’s – Blue Jeans mit Kultstatus, published at www.style-news.org, on 03/12/2010, with the following reference: ‘The Levi’s 501 is one of the most widespread jeans models worldwide. The company owes this surely to style icons such as Elvis Presley, James Dean and Marlon Brando, which often and willingly wore these practical trousers and not insignificantly contributed to the iconic status of blue jeans.’
• Levi’s, published at www.fashionlinesite.com, with a reference to the jeans model as ‘Three digits – a revolution’ and reading the following: ‘Levi’s 501 is one of the most famous and most worn jeans in the world.’
• Knackpo für alle, by Angelika Slavik, published at Süddeutsche Zeitung, on 29/08/2011, with a reference to the jeans as ‘the 501 jeans, the most well-known jeans in the world’.
• Die Levi’s 501, published at www.modeguides.de, on 20/04/2012 with the following reference: ‘There is certainly no man who does not know the Levi’s 501.’
• Starts who wear Levi’s 501s, published at the The Telegraph (www.telegraph.co.uk), on 27/04/2013, with a reference to the ‘iconic blue jeans’.
• How much are your vintage Levi’s worth? Rare denim jeans from the Fifties are selling for up to USD 8.000 on eBay, published at www.dailymail.co.uk, on 21/05/2013, where a picture of a pair of Levi’s jeans for currently listed on eBay, is illustrated together with a reference to its price for collectors.  
• Das demokratischste aller Kleidungsstücke, by Franziska Klün, published at Die Zeit Online, on 16/07/2013, and devoted to the opponent’s 501 jeans.
• Levi’s 501 jean interpretations, published at Fashion United, on 22/07/2013, where the articles reads the following: ‘Ask anyone in fashion which items would appear in their top ten list of iconic pieces, and the Levi’s 501 jean would appear somewhere at the top of that list. Now celebrating its 140 year, Levi’s have released 501 copies of a special edition book to celebrate the iconic 501 jeans.’

Annex 12: National case law – extracts from decisions of national courts acknowledging the highly distinctive character and the reputation of the trade mark ‘501’, in particular rendered by the relevant Belgian, French and Spanish bodies. The decisions and their originals are accompanied by relevant translations into English and refer in different aspects to the opponent’s brand ‘501’, in particular the following:

• decision of Tribunal of Commerce of Brussels of 03/10/2000, 4698/99, Levi Strauss & Co / S.C. Anatolian Delivery Services, where the Tribunal stated that ‘the word mark 501 has aquired a sifnificant reputation over several years […]‘;
• decision of Court of Brussels of 07/06/20102, 2000/AR/254, Levi Strauss & Co / Casucci Spa, where the Court stated ‘given that these signs [501 and 901] have acquired a particular distinctive character due to their intensive use by LEVI STRAUSS’;
• judgment of the Tribunal of First instance of Bobigny of 22/02/2000, 99/04386, Levi Strauss & Co / Societe GMS International, where the Tribunal states that the Levi Strauss marks are reputed;
• judgment of the Tribunal of First instance of Paris of 20/03/2009, 08/13440, Levi Strauss & Co / SARL Le temps de la mode, with a reference that the infringing right wanted to illegaly use the very important reputation of its trade marks [Levi’s Strauss];
• judgment of the Tribunal of First instance of Paris of 17/06/2008, 06/14339, Levi Strauss & Co / SARL Vise;
• decision of Appeal Court of Angers Commercial Chamber of 15/04/2003, 01/00404, Levi Strauss & Co / SA Busson and Blue light, where it was considered that the infringing right [Blue Light 701] is benefiting from Levi Strauss continental’s efforts and the reputation of ist goods;
• judgment of the Tribunal of First instance of Paris of 29/04/1998, 97/3295, Levi Strauss & Co / Moda Italia, with a reference that the use of the infringing right would result in a weakening of its [Levi’s Strauss] reputed 501 trade mark;
• judgment of the Tribunal of First instance of Paris of 04/03/1998, 97/6010, Levi Strauss & Co / Mr Trad Imad (proprietor of Jean’s 001);
• judgment of the Superior Court of Justice of Palma de Mallorca of 30/12/2003, 1048/2003, Levi Strauss & Co / Abdelaziz Mohamed Mohamed, stating that the earlier mark is well-known.

Annex 13: Publication of cease and desist obligation – a publication at the French Journal du textile, on 21/03/1994, where the company provides publicly available information about the protected company’s trade marks, among which, the mark ‘501’. Although not referred to as the particular European Union trade mark subject of the proceedings, EUTM No 26 708, the reference to the trade mark ‘501’ itself must also be taken into account as it is made to the open public in one of the relevant countries in the present case, namely France.  

Annex 14: Affidavit – by an employee of the company, with relevant financial information regarding the opponent’s annual sales (units and turnovers) of the jeans model ‘501’, for the period between 2005 and 2010 and in the territory of the European Union, broke down by countries (Exhibit 1). Furthermore, as Exhibit 2 the witness of the statement also provides an overview of the market share of the brand ‘Levi’s’ in comparison to other competitors, which reaches close to 20%. However, the witness also states that 35% of Levi’s jeans bear the brand ‘501’, assuring in this way the applicability of the results in relation to the present case. It must be pointed out that the relevant overview has been conducted by an independent party and relates to five European Union countries in total, namely France, Germany, Italy, Spain and the United Kingdom.

Bearing in mind the nature of the evidence above, it may be concluded that the advertisements, many of them awarded at international competitions as demonstrated by the opponent, and the references to the ‘501’ trade mark by independent parties such as various books, paper magazines and on webpages, give some solid information as to the opponent’s investments and its promotional communication, as well as to its consistent presence in the public space throughout the years since the establishment of the company and of the brand ‘501’, respectively.

Furthermore, it is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures and market share shown by the evidence (in particular illustrated by Annexes 9 and 14 in conjunction with each other), the marketing expenditure (demonstrated by Annexes 2, 3, 4 and 5), as well as the various references in the press to its success (in particular Annexes 10 and 11) all unequivocally show that the mark enjoys a high degree of reputation among the relevant public.

In addition, the opponent also provides records of successful enforcements before national judicial or administrative authorities (Annex 12) showing that the reputation of the trade mark ‘501’ has been repeatedly recognised and protected against infringing acts throughout the relevant years. This evidence, on its own, is an important indication that the mark enjoys a reputation in these relevant territories (in particular in Benelux, France and Spain) and further supports the Opposition Division’s findings above.

Although the materials do not consecutively refer to all the countries of the European Union, the Opposition Division acknowledges, on the basis of the overview of the evidence, that reputation has been proven for the earlier right at least in Benelux, Italy, France, Germany, Spain and the United Kingdom, which is sufficient for concluding that the earlier trade mark has reputation in the European Union. In support to this finding it must be pointed out that the Court indicated that an EU trade mark must be known in a substantial part of the EU by a significant part of the public concerned by the goods or services covered by that trade mark. In view of the facts of the particular case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the EU (06/10/2009, C 301/07, Pago, EU:C:2009:611, § 29-30).

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for some of the goods for which the opponent has claimed reputation, namely for jeans. However, the Opposition Division acknowledges that this particular good belongs to the broad category of the opponent’s clothing, for which the mark ‘501’ has been registered.

 

As to the remaining goods in Classes 16, 18 and 25, the Opposition Division notes that the evidence listed above mainly relates to clothing, in particular jeans, whereas there is no or little reference to the remaining goods, including other pieces of clothing such hats. This is clear, for example, from the market share report, press clips, advertisements and other references already listed above, where only the former are mentioned.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As was established above, the signs are similar to the extent that the contested sign incorporates the three-digit number representing the earlier mark. The mere fact that particular conflicting signs coincide in the representation of three-digit numbers would not be sufficient in itself to conclude the same origin, especially when there are more differentiating elements (such as the word ‘room’ for the English speakers). Consequently, it cannot be ruled out that that the average consumer, regardless of its possible understanding of the word ‘room’, is likely to make an immediate link between the signs containing the conflicting three-digits numbers, bearing in mind the strong reputation of the number ‘501’ on its own in relation to a particular category of goods.  

In addition, the establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

In the present case, there is in, principle, no overlap between the relevant sections of the public for the trade marks in dispute, namely the contested goods in Class 3 being perfumes and cosmetics (including the contested soaps, essential oils, hair lotions, shaving products), and the opponent’s reputed jeans in Class 25. While the contested goods are aimed at public interested in personal care and beautification, the earlier trade mark was found to have a reputation only among public with an interest in fashion, in particular in the high quality garment that the opponent manufactures since the past century. However, as stated by the Court in a decision of 11/07/2007, T 150/04, Tosca Blu, EU:T:2007:214, § 32-33, 35, there is a certain degree of similarity between these goods, insofar they may appear aesthetically complementary in the eyes of the relevant public.

With respect to this mental connection, the opponent has provided evidence concerning the release of new perfumes and cosmetic products under known to the public fashion brands for the relevant period between 2011 and 2014 (Enclosures 4 and 5). As may be seen, the connection between goods in Class 3 and goods in Class 25 may be established on the premises of economically successful fashion designers and manufacturers that launch other products related in a way to the fashion appearance and attributable lifestyle of their customers. In the present case, it was concluded that the opponent is a pioneer in the manufacturing of jeans of superior quality and it has been a fashion leader throughout the years. Therefore, it cannot be excluded that by launching a brand of perfumes or cosmetic product incorporating the ‘iconic’ numeral ‘501’, the link with the opponent’s three-digit number may inevitable appear in consumers’ mind also in relation to other products related to one’s personal style and appearance.  

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will most likely associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

4. 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’ (06/07/2012, 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.

The opponent claims the following:

(…) the use of the contested mark ‘ROOM No 501’ for goods that are as closely related to the goods for which the 501 mark enjoys a reputation would invariably lead to a transfer of goodwill and, thus, unfair advantage being taken of the reputation enjoyed by 501 in the European Union. Moreover, the earlier mark would cause dilution, i.e. damage to its distinctiveness.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mar and be detrimental to the distinctive character of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 3:        Soaps; perfumes; essential oils, cosmetics, hair lotions; shaving products. 

As seen above, the earlier trade mark was found to have a reputation for:

Class 25:         Clothing, namely jeans.        

Detriment to the distinctive character (dilution)

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 29).

The opponent bases its claim on the following.

• the use of the contested sign will serve to demonstrate that, contrary to the relevant public’s expectations, the ‘501’ mark is not solely used by the opponent but also by other traders, and in addition even in related product fields;

• the use of the contested sign ‘ROOM No 501’ would be detrimental to the uniqueness and distinctiveness of the 501 mark;

• the use of the contested sign will result in a serious risk that the distinctiveness of the 501 mark will be impaired and the economic behaviour of the relevant consumers will be affected.

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 35).

If the distinctive character of an earlier trade mark is one of the circumstances generally relevant for the applicability of Article 8(5) EUTMR, it is particularly relevant in cases where precisely the distinctive character of the earlier trade mark is allegedly being put at risk.

‘Erosion’ of the earlier trade mark’s distinctive character (sometimes called ‘dilution by blurring’) is more likely where the elements of the trade marks giving rise to similarity between signs enjoy a considerable degree of inherent distinctive character. As mentioned by the Court of Justice, ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 74).

The circumstances in the present case suggest that use of the contested trade mark containing the three-digit number 501 will result in dilution of the earlier trade mark. This is because the similarities between the signs relate to elements which are particularly distinctive. The opponent put forward a coherent line of arguments supporting the highly distinctive character of its brand ‘501’. It was evident from the evidence listed above in section b) of this decision, that the three-digit number 501 has become a token of jeans products for many generations and the relevant public is accustomed to perceive that number exclusively in relation to the opponent’s company Levi’s. Consequently, bearing in mind the proximity of the relevant commercial sectors, as concluded above, and given the inherently distinctive character of number ‘501’ in relation to the products for which it has been used through the years and, respectively, reputed for the latter, it cannot be excluded that the contested sign ‘ROOM No 501’ may, in fact, affect the greater capacity of the three-digit earlier mark to identify particular category of products as originating from a particular manufacturer. As the opponent points out, in a certain prospect, the use of the contested sign may lead to an economic loss for the opponent. This might be caused by the fact that, given the probable use of the contested sign in a future period, consumers will be less inclined to immediately associate the number ‘501’ with the opponent and the reputation it has built up in relation to the high quality products featuring the brand in question.  

Therefore, on the basis of the above, the Opposition Division concludes that the contested trade mark is likely to be detrimental to the distinctive character of the earlier trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining ground on which the opposition was based or particular claims or assertions of the opponent that have been introduced in relation to the opposition proceedings.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Volker  MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Liliya YORDANOVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.