OPPOSITION No B 2 519 372

ONE STEP, 94, rue Choletaise Saint-Macaire-en-Mauges, 49450 Sèvremoine, France (opponent), represented by Cabinet Bouchara · Avocats, 17, rue du Colisée, 75008 Paris, France (professional representative)

a g a i n s t

Profoot Inc., 74 20th Street, Brooklyn, New York  11232 , United States of America (applicant), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative)

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 519 372 is upheld for all the contested goods, namely:

Class 25: Clothing, footwear, headwear; insoles; inserts for footwear for primarily non-orthopedic purposes; heel pads; heel inserts; heel pads, insoles and inserts for footwear for cushioning and supporting the feet; shoe inserts for primarily non-orthopedic purposes.

2.        European Union trade mark application No 13 551 635 is rejected for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 551 635 for the word mark ‘STEP 1’, namely against all the goods in Class 25. The opposition is based on, inter alia, French trade mark registration No 1 689 746 for the word mark ‘ONE STEP’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

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

The contested application was published on 11/02/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the relevant territories from 11/02/2010 to 10/02/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the proof of use concerning French trade mark registration No 1 689 746. In the case of this earlier mark, it is based on the following goods:

Class 25:        Clothes, footwear, headgear.

On 11/01/2017, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/03/2017 to submit evidence of use of the earlier trade marks. On 16/03/2017, within the time limit, the opponent submitted evidence of use.

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 to be taken into account in relation to French trade mark registration No 1 689 746, is the following:

• Exhibit1: extracts from numerous different fashion magazines in French from the years 2011-2014 with partial English translations thereof and featuring on most of the cover pages French website addresses, such as www.maxi-mag.fr, www.marieclaire.fr, www.elle.fr, www.prima.fr, www.cosmopolitan.fr, www.femmeactuelle.fr, www.gala.fr, www.femina.fr and www.magazine-avantages.fr, and/or prices indicated as, for example, ‘F: 2.50€’. To mention but a few of the fashion magazines concerned, they are ‘Stylepapers’, ‘Maxi’, ‘Public’, ‘Marie Claire’, ‘Oops!’, ‘prima’, ‘ELLE’, ‘COSMOPOLITAN’, ‘Femme Actuelle’, ‘Gala’, ‘femina’, ‘METZfemme’, ‘MODES & TRAVAUX’, ‘avantages’ and ‘Pili Pili STRASBOURG’. The extracts from the fashion magazines show use of the earlier mark referred to as either ‘One Step’ or ‘ONE STEP’ in relation to in particular blouses, trousers, tank tops, dresses, t-shirts, jackets, jeans, belts, scarves, skirts, sweaters, cardigans, pants, jackets, coats, trench coats and parkas but also to some extent in relation to boots, shoes and sandals and to a much lesser extent in relation to a few felt hats, hats, wool hats and berets.

• Exhibit2: extracts from ‘One Step’ product catalogues in French for the years 2012, 2013 and 2014 featuring a wide range of different clothing articles including scarves and belts together with their different article numbers. All back pages feature the website www.onestep.fr and the product catalogues also show use of ‘One Step’, inter alia, in the following ways:

          

• Exhibit3: numerous invoices in French issued by the ‘ONE STEP’ department of Groupe Zannier International from the years between 2011 and 2015 and including samples from various different months each year. The invoices are addressed to different companies in France located in different cities. All the invoices include different article numbers together with a description of the products sold and English translations thereof and show sales of a wide range of different clothing articles, such as tops, blouses, dresses, cardigans, pullovers, trousers, trench coats, t-shirts, scarves, belts, jackets, vests, skirts, leggings, polo shirts, parkas, Bermuda shorts and jeans. Some of the invoices for all the years between 2011 and 2015 also show sales, but to a much lesser extent, of different footwear articles described as gaiters shoes, sandals and shoes. One invoice from 2014 also includes sales of three items described as hat scarf. The invoices submitted show product sales for hundreds of thousands of euros during the relevant years and the article numbers included in the invoices for the different clothing articles can also be found in the ‘One Step’ product catalogues submitted (exhibit2) for the corresponding years and include pictures of the articles referred to as shown in the following example (article number FB22151):

• Exhibit4: a few pages from a trade mark licence and exclusive distribution agreement in French together with an English translation thereof between the opponent and a third party company in France. The agreement concerns a licence to use, inter alia, the earlier mark ‘ONE STEP’ for shoes for women, inter alia, in France and concerns the period from 1 January 2014 to 31 December 2015.  

• Exhibit5: extracts from the website www.onestep.fr dated 11/03/2017 including a picture of ‘one step’ branded shoes as follows:

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 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. These requirements are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and the opponent must thus prove each of these requirements. However, the sufficiency of the evidence as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

Place

As regards the place of use, the extracts from the fashion magazines, the product catalogues and the invoices show use of the earlier mark in the relevant territory, namely France.

Time

Although none of the evidence relates to 2010, which is part of the relevant time period, the invoices concern all the other years between 2011 and 2015, the fashion magazines the years 2011-2014 and the product catalogues the years 2012-2014. Consequently, the evidence submitted relates to most of the relevant time period and therefore provide sufficient information concerning the time of use.

Nature of use

In the context of Rule 22(3) EUTMIR, the required ‘nature of use’ of the trade mark refers to its use as a trade mark in the course of trade, the use of the mark as registered, or of a variation thereof according to Article 15(1)(a) EUTMR, and use of the mark for the goods and services for which it is registered.

The evidence submitted shows use of the earlier mark in the course of trade as ‘One Step’ or ‘ONE STEP’ in the fashion magazines and, inter alia, as follows in the product catalogues:

The earlier trade mark is a word mark for ‘ONE STEP’. In the case of word marks it is the word as such that is protected and not its written form. Therefore, use of the earlier mark as ‘One Step’ clearly constitutes use of the earlier mark as registered. As regards the use of ‘one step’ together with a figurative device in the middle, two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). In the present case, the Opposition Division considers that the additional figurative element depicted together with ‘one step’ does not alter the distinctive character of the earlier mark for ‘ONE STEP’ and therefore also constitutes use of the earlier mark within the meaning of Article 15(1)(a) EUTMR.

The evidence of use of the earlier mark also shows a link between the use of the mark and a wide range of different clothing articles, different footwear articles and to a much lesser extent some headgear articles as referred to above. As a result, the evidence as a whole shows use, or at least some use, of the sign as a trade mark in relation to clothes, footwear, headgear.

Extent

In relation to the extent of use, the extracts from the different fashion magazines together with the invoices submitted which mainly concern a wide range of different clothing articles show quite significant use of the earlier mark in relation to clothes.

As regards the extent of use concerning footwear, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.

The fashion magazines and invoices provided (which concern footwear to a much lesser extent) do not confirm, bearing in mind the characteristics of the market concerned, that the extent of use or commercial volume achieved under the mark has been particularly high in relation to such goods. However, this may be offset by the fact that, since different footwear articles are included in the fashion magazines from all years between 2011 and 2014 and there are invoices from all the years between 2011 and 2015 showing, albeit relatively small but increasing, sales of different shoes to companies in different cities, the evidence shows continuous use of the mark for footwear over a long period of time and to a widespread territorial extent. Therefore, although the evidence submitted by the opponent is not particularly exhaustive insofar as it concerns the extent of use in relation to footwear, the Opposition Division considers that the evidence, taken as a whole, does reach the minimum level necessary to establish genuine use of the earlier trade mark in relation to footwear as well.

However, the relatively large amount of invoices submitted for the years 2011-2015 only show sales of three hat scarves in one single invoice from 2014. According to well-established case-law, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, HIWATT, EU:T:2002:316, § 47; 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004:292, § 28). Therefore, and although a few of the fashion magazines also show some use of the earlier mark in relation to headgear articles, the evidence submitted, even taken as a whole, is clearly insufficient in the absence of further supporting material, to establish to the requisite legal standard, the extent of use of the earlier mark in relation to headear. As stated above, the factors of time, place, extent and nature of use are cumulative, and the evidence must provide sufficient indications of all these factors to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as the extent of use has not been established for the earlier mark in relation to headgear, the Opposition Division considers that the evidence only shows genuine use of the trade mark for the following goods on which the opposition was based:

Class 25: Clothes, footwear.

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

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 1 689 746.

1. The goods

The goods on which the opposition is based and for which use has been proven are the following:

Class 25: Clothes, footwear.

The contested goods are the following:

Class 25: Clothing, footwear, headwear; insoles; inserts for footwear for primarily non-orthopedic purposes; heel pads; heel inserts; heel pads, insoles and inserts for footwear for cushioning and supporting the feet; shoe inserts for primarily non-orthopedic purposes.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

Clothing and footwear are identically contained in both lists of goods (including synonyms).

The contested headwear is similar to the opponent’s clothes since these goods are of an identical or very similar nature. They also serve the same purpose, in particular as regards types of clothes that are supposed to give some protection against the elements. Furthermore, headwear is not only seen as a mean for protecting the head against weather influences, but also as a fashion article which may match an outfit and for this reason is sometimes chosen as a complementary item to clothes. Moreover the distribution channels of the respective goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected.

The contested insoles; inserts for footwear for primarily non-orthopedic purposes; heel pads; heel inserts; heel pads, insoles and inserts for footwear for cushioning and supporting the feet and shoe inserts for primarily non-orthopedic purposes are complementary to the opponent’s footwear. Consumers seek for such goods in the same sales outlets and expect them to be produced under the control of the same entity. Therefore, these 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 are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

ONE STEP	STEP 1
Earlier trade mark	Contested sign

The relevant territory is France.

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

The earlier mark is the word mark ‘ONE STEP’ and the contested sign the word mark ‘STEP 1’.

The element ‘STEP’ of both signs is an English word that will not be understood as having any meaning in relation to the goods concerned by the relevant public in France and will be perceived as distinctive.

Both the number ‘1’ in the contested sign and the word ‘ONE’ in the earlier mark will be perceived by the relevant public as referring to the number 1 since ‘ONE’ is a very basic English word, which will be understood in France. In this respect, the word ‘ONE’ and the numeric symbol ‘1’ are often used to designate a characteristic of the goods concerned, such as a size or their quality (No 1 as in of the ‘best quality’). Therefore, the elements ‘ONE’ and ‘1’ respectively will be perceived in both signs as a weaker element to the distinctive word ‘STEP’.

Visually, the signs coincide in the distinctive word ‘STEP’. However, they differ in the word ‘ONE’ at the beginning of the earlier mark and the number ‘1’ at the end of the contested sign which, regardless of their position within the signs in dispute, are however secondary to the coinciding word ‘STEP’ as explained above.

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

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘STEP’. The pronunciation differs in the sound of the word ‘ONE’ (pronounced as [wʌn]) at the beginning of the earlier mark and the sound of the number ‘1’ (which will be pronounced as [œ̃]) at the end of the contested sign.  

 

For the same reasons as those outlined above, the signs are also aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the word ‘ONE’ of the earlier mark and the number ‘1’ of the contested sign will evoke the same concept of the number 1, it will only lead to a low degree of conceptual similarity as this element in both signs will have less relevance as an indication of the commercial origin of the marks. The attention of the relevant public will be attracted by the additional distinctive verbal element ‘STEP’ of both signs, which has no meaning.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weaker element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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

Moreover, 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.

In the present case, the goods have been found identical or similar and the degree of attention of the relevant public is average.

The earlier mark has a normal degree of distinctiveness as a whole and the signs are visually and aurally similar to an average degree and conceptually similar to a low degree on account of their identical inclusion of the word ‘STEP’, albeit in different positions, and their coincidence in the association to the same cardinal number, albeit depicted as the letters ‘ONE’ in the earlier mark whereas depicted as the numeric symbol ‘1’ in the contested sign.

Considering that the goods are identical or similar and that the coinciding element ‘STEP’ is the most distinctive element of both signs, the Opposition Division considers that the different position of the element ‘STEP’ within the signs in dispute and the inverted order of the reference to the number 1 depicted as a word and a numeric symbol respectively, is insufficient to exclude a likelihood of confusion on the part of consumers who must trust in their imperfect recollection of them. Indeed, even if the relevant public did recall the slight differences between the signs, it is nevertheless highly conceivable that the relevant consumer would still perceive the contested sign as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

As a result, there is a likelihood of confusion on the part of the public in the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 689 746. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier French trade mark registration No 1 689 746 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268), the proof of use submitted concerning these earlier marks or the applicant’s argument that they were not properly substantiated by the opponent within its time limit to submit further facts, evidence and arguments in support of the opposition.

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 applicant 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

Steve HAUSER

Sam GYLLING

Begoña URIARTE VALIENTE

 

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.