STYLISTCLICK | Decision 1966178 – Shortlist Media Limited v. Spartoo SAS

OPPOSITION No B 1 966 178

Shortlist Media Limited, 26-34 Emerald Street, London WC1N 3QA, United Kingdom (opponent), represented by Cleveland, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative)

a g a i n s t

Spartoo SAS, Rue Henri Barbusse 16, 38100 Grenoble, France (applicant), represented by Cabinet Hecke, 10 Rue d’Arménie – Europole, BP 1537, 38025 Grenoble Cedex 1, France (professional representative).

On 17/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 966 178 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 340 248 ‘STYLISTCLICK’. The opposition is based on European Union trade mark registration No 8 367 401 ‘STYLIST’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 goods and services

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

Class 9: Information stored in or on electronic magnetic and/or optical means; electronic publications; digital publications; pre-recorded digital media; downloadable publications; electronic publications in electronic form supplied on line from a database or from facilities provided on the Internet or other networks; webcasts; podcasts; vodcasts; podscrolls; video and audio tapes, cassettes, discs and records; CD Roms; interactive CDs; video CDs; DVDs.

Class 16: Printed matter; printed publications; books, manuals, magazines, periodicals, journals; articles of stationery; instructional and teaching materials; calendars and posters.

Class 35: Advertising; marketing, business and promotional services; arranging and placing advertisements for others; bringing together for the benefit of others a variety of advertisements to enable customers to conveniently view or purchase those goods and services from a printed publication or from a web site or through television or other electronic media; information and advisory services relating thereto.

Class 41: Publishing and electronic publishing services; provision of educational and entertainment related non-downloadable information; provision of educational and entertainment related non-downloadable information; entertainment services; cultural and sporting events; sports club services; live events; booking agency services; organisation of competitions and award ceremonies; information, advisory and consultancy services relating thereto.

The contested goods and services are the following:

Class 18: Leather and imitation leather, goods made of these materials (leather and imitation leather) not included in other classes namely: key cases (leatherware), briefcases, wallets, purses, handbags, school bags and satchels, tool bags (empty), rucksacks, shopping bags, bags for climbers, bags for campers, beach bags, travel bags, garment bags (for travel), boxes of leather or leather board, leather straps, leather bands, collars for animals, coats for animals, leather leashes, muzzles, leather upholstery for furniture; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Grouping together, for others, shoes, shoe care products, clothing and underwear, bags, optical goods, purses and wallets, jewellery (except transport), enabling customers to view and purchase these goods conveniently, and the presentation of these goods on all means of communication for the purposes of retail sale.

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

The term ‘namely’, used in Class 18 of the applicant’s list of goods and services 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.

Furthermore, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 18

The contested goods in Class 18 include a large variety of products, such as various kinds of animal skins (or imitations thereof), raw materials and products made from animal skins, as well as different types of storage cases, goods intended to provide protection from rain or sun, or assistance with walking, and goods for the control and/or riding of animals. These goods have nothing in common with the opponent’s goods, which include a variety of information storage devices, recorded media and digital publications (Class 9), and printed matter and instructional and teaching material (Class 16). The goods in question have different natures, purposes and methods of use. They do not have the same producers or distribution channels. Furthermore, they are neither complementary nor in competition.

The same applies to the contested goods and the opponent’s services (in Classes 35 and 41), which are a variety of advertising and business services, as well as services relating to publishing, education, cultural events and organising various events. The contested goods and the opponent’s services have nothing in common that could lead to degree of similarity between them. It follows that the contested leather and imitation leather, goods made of these materials (leather and imitation leather) not included in other classes namely: key cases (leatherware), briefcases, wallets, purses, handbags, school bags and satchels, tool bags (empty), rucksacks, shopping bags, bags for climbers, bags for campers, beach bags, travel bags, garment bags (for travel), boxes of leather or leather board, leather straps, leather bands, collars for animals, coats for animals, leather leashes, muzzles, leather upholstery for furniture; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery are dissimilar to the opponent’s goods and services.

Contested goods in Class 25

The contested goods in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. They have nothing in common with the opponent’s goods in Classes 9 and 16 or the services in Classes 35 and 41, as they differ in their nature, purpose, methods of use, producers and distribution channels. Furthermore, they are neither complementary nor in competition. It follows that they are dissimilar.

Contested services in Class 35

The contested services in Class 35 are services consisting of activities around the actual sale of the explicitly listed goods (i.e. shoes, shoe care products, clothing and underwear, bags, optical goods, purses and wallets, jewellery (except transport)). These services are not similar to any of the opponent’s goods in Classes 9 and 16. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The services relating to the sale of goods focus on bringing together and offering for sale the specified products, thus allowing consumers to conveniently satisfy different shopping needs at one stop (point of sale). This is not the purpose of the opponent’s goods. Furthermore, goods and services have different methods of use and in this case are neither in competition nor complementary to each other.

Similarity between services consisting of activities around the actual sale of specific goods under one mark and specific goods covered by another mark can only be found where the goods involved in these services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar. Therefore, all of the contested services are dissimilar to the opponent’s goods.

Similarity could not be found between the contested services in Class 35 and the opponent’s services in Classes 35 and 41 either.

The opponent’s services in Class 35 include marketing and advertising services (such as arranging advertisements for others and bringing together, for the benefit of others of advertisements), as well business services and information and advisory services related to the aforementioned services.

The advertising and marketing services and any information and advisory services relating thereto are different in nature and purpose from the contested services. The opponent’s services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, television, the internet, etc.

Furthermore, the opponent’s business services are also services provided by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand their market share, which is clearly different from the purpose of the contested services.

The opponent’s services in Class 41 and the contested services do not have the same nature, purpose or method of use, as the opponent’s services are related to entertainment, education, the organisation of a variety of events and the publication of printed matter, and, furthermore, they require different types of knowledge and expertise in comparison to the services relating to the sale of the goods in question.

Consequently, the opponent’s services in Classes 35 and 41 and the contested services have different end users and distribution channels. They are neither complementary nor in competition. It follows that they are dissimilar.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that its earlier mark has a reputation in the territory of the European Union.

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

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

The signs must be either identical or similar.

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

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

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

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

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 contested trade mark was filed on 14/10/2011. However, the contested trade mark has a priority date of 25/08/2011. 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 and services for which the opponent has claimed reputation, namely:

Class 16: Printed matter; printed publications; books, manuals, magazines, periodicals, journals; articles of stationery; instructional and teaching materials; calendars and posters.

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.

On 22/12/2015, the opponent submitted the following evidence:

Circulation figures for the period between 2009 and 2012 were provided by the opponent with its observations. The opponent explains that ‘[t]he figures are calculated on the basis of the average number of magazines distributed within the United Kingdom each week and have been verified by ABC, an independent body that verifies and reports on media performance’. The following material was submitted in support of this statement:

Printouts from www.ppa.co.uk indicate that the figures shown in the list provided are ‘ABC Results’ for the periods between July and December 2010 and July and December 2012. The list is entitled ‘Woman’s Interest: Lifestyle & Fashion’ and it includes titles (of magazines or other publications) and publisher names, and several columns with different figures for ‘circulation’ (including ‘price’) and ‘actively purchased’ (including ‘total’). The earlier sign (‘Stylist’) is listed alongside the opponent’s name. However, there is no information about price in the field ‘actively purchased’; the amount shown is ‘0’ for all the periods covered. The figures given for ‘circulation’ (‘total net’) are, for instance, 424 107 for July-December 2010 and 426 396 for January-June 2011.
Printouts from BrandRepublic, dated January-June 2010 (www.brandrepublic.com), showing a list entitled ‘Magazine ABC: Top 100 in full’, with the magazine Stylist placed at number 27. Again, there are no figures for ‘actively purchased %’ and the amount shown is ‘421 158’, which appears to be the circulation figure.
A printout from Press Gazette (www.pressgazette.co.uk) lists information about the ‘Top 100 magazines in the UK in the second half of 2009-ranked by total circulation, including free copies’, and the source quoted is ‘ABC’. This printout indicates that Stylist is number 32, with 410 674 copies, but there is no information on the percentage figure that is supposed to indicate ‘the change year on year’.

The opponent further claims that these figures gave its magazine a 33% market share for the July-December 2012 period; however, there is no evidence of this in the documents submitted.

Printouts from several websites containing the word ‘click’ in the domain name or in the text (e.g. fashionclick.com, stationeryclick.com, clickticket.com, etc.). The opponent claims that these are examples of ‘the descriptive use of ‘CLICK’ for online retailing’.
Seven cover pages of various magazines, such as John Lewis Free Edition, H&M Magazine and TOPSHOP, were submitted, without any reference to the earlier sign.
An article from www.economist.com, entitled ‘Non-news is good news’, dated 09/06/2012. It states that ‘among magazines there is a new sense of optimism in North America, where the recession bit deepest …, more new magazines were launched than closed in 2011 for the second year in a row’; there is no reference to the earlier mark. The opponent states in its observations with regard to this article that ‘[t]he media and publishing sector is a highly competitive marketplace, which has changed significantly in recent years as a result of the advent of the digital age, and which has seen the growth of a new publishing landscape’.
Eight excerpts from the opponent’s website www.stylist.co.uk, with the title ‘STYLIST.co.uk’ at the top. The excerpts show the section headings ‘fashion’, ‘beauty’, ‘careers’ and ‘travel inspiration’. Only two of them are dated. One is headed ‘Red Carpet Round-Up: Brit Awards 2013’ and the other contains a recipe, dated 07/05/2013. The opponent explains that its website is ‘an abridged version’ of the magazine Stylist.
Eight separate advertisements (said to be from the opponent’s website), depicting advertisements for cosmetics and fashion products, and three pages from the section ‘Stylist Advertorial’ of the website www.stylist.co.uk, with articles on shopping, fashion and make-up. This material was manually dated by the opponent; four of the advertisements are dated between 28/07/2010 and 15/06/2011, and the other pages are dated after the relevant date, namely between 19/10/2011 and 08/05/2013. The numbers of the corresponding magazine issues were provided by the opponent. An undated list of advertisers in Stylist magazine, drafted by the opponent, was also submitted.
Four separate excerpts from the websites stylistnetwork.eventbrit.com and www.stylist.co.uk (one dated 19/06/2013 and the others undated), two single pages from ‘Stylist Network’-magazine (dated by the opponent 19/05/2010, issue 30, and 15/02/2012, issue 1130) and four separate photographs (from what appears to be a fashion event), with the sign ‘Stylist’ or ‘Stylist Network’ visible in them. These excerpts refer to events organised by Stylist Network, such as ‘develop your own app’, ‘run an outdoor business’ and ‘food business start-up evening’.
Three printouts from social media (two from Facebook and one from Twitter) showing ‘Stylist Magazine’ pages, undated. The ‘Twitter’ page shows 577 000 followers. The opponent explains that these materials reflect accurate figures ‘as at 8 December 2015’.
Press cuttings from www.guardian.co.uk, containing an article entitled ‘The Week, Stylist, T3 and TES all double winners at PPA awards’ (dated 21/06/2012) which states the following: ‘Stylist, the free weekly published by ShortList media, won ‘Consumer Media Brand of the Year’. Stylist’s Lisa Smosarski was named editor of the year consumer media’; diarydirectory.blogspot.co.uk, containing an article entitled ‘Winners announced at The Johnson & Johnson 8th Annual Beauty Care awards’ (dated 25/01/2012) which states that ‘[t]he awards celebrate the finest beauty journalism in the UK, stretching across consumer and trade publications, national newspapers, online magazines and blogs’ and lists Joanna McGarry, Stylist, as a winner of the ‘Best Weekly Consumer Magazine Beauty Journalist’ award; www.ppa.co.uk, containing an article entitled ‘UBM journalist takes Grand Prix at inaugural PTC New Talent Awards’ (dated 02/02/2012), reporting on an award received by a journalist from a magazine other than the opponent’s magazine, which states that ‘Amy Grier from ShortList Media stablemate Stylist was named new Consumer Journalist of the Year’; www.bsme.com, which lists the ‘2010 BSME Awards’/‘Editors of the Year’, under ‘Launch of the Year’ one of the winners being ‘Lisa Smosarski, Stylist –Shortlist media’; and http://awards.womenofthefuture.co.uk, which includes a brief report on ‘2010 awards’ and states the following: ‘[i]n the last five years the Women of the Future Awards have recognised and provided a platform for an exciting generation of female stars across multiple sectors’. It lists ‘Lisa Smosarski, editor, Stylist’ as a winner and gives the following information: ‘Lisa is the launch editor of Stylist, the first “freemium” weekly women’s title and the fourth biggest women’s magazine by distribution’.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

A large number of the submitted items of evidence (the excerpts from the opponent’s website, some of the excerpts from other websites, the press cuttings related to awards and most of the advertisements) are dated after the priority date of the contested sign. Given that reputation is usually built up over a period of years and cannot simply be switched on and off, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence, as they can point to the reputation acquired during the relevant period.

The relevant territory is the European Union; however, the evidence submitted points exclusively to the territory of the United Kingdom. As stated by the Court (06/10/2009, C-301/07, Pago, EU:C:2009:611, § 29-30), an earlier EU trade mark’s reputation throughout the territory of a single Member State may suffice for the purposes of Article 8(5) EUTMR. In general, however, when evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory.

The magazine at issue is apparently distributed by the opponent free of charge (as stated directly in some of the documents and inferred from others). When it comes to a free product, in terms of assessing the use of the sign and its reputation, consideration should be given to the commercial aim of the entity, namely whether or not the dissemination of the product is intended to create or maintain an outlet for those goods, as opposed to the goods and services of other undertakings. The evidence suggests that the sign in question is not used merely to promote other goods, even though the magazine appears to contain advertisements for goods of other entities. As the submitted excerpts from Stylist magazine show, this magazine contains articles on various topics (fashion, travel, etc.). Providing information on various topics is usually the purpose of a magazine and the basis on which magazines compete on the market. The opponent’s product also appears in listings and rankings along with other magazines, as seen from the printouts submitted (from www.ppa.co.uk, www.brandrepublic.com and www.pressgazette.co.uk). Therefore, it is concluded that the opponent’s magazine, although free of charge, is offered with a commercial purpose.

The information provided by the website www.ppa.co.uk points to circulation figures of over 420 000 for the magazine Stylist over six-month periods (424 107 for the period between July and December 2010, and 426 396 for the period between January and June 2011). The printouts from BrandRepublic and Press Gazette provide rankings of 100 magazines, based on the number of circulated copies, which, respectively, place Stylist in 27th position (for the January-June 2010 period) and 32nd position (for the July-December 2009 period).

These rankings order magazines by their circulation figures. However, the figures for actual purchases of the magazines are different, as is clearly shown in the printout from BrandRepublic. A large number of the magazines in the list, including some of those at the top of the circulation ranking, have significant circulation figures, but no sales. For instance, this is the case for the magazine in first place in the ranking, which has circulation figures of more than 7 000 000 copies, but none of these copies are considered to be ‘actively purchased’. As mentioned above, the opponent’s magazine is placed 27th (with 421 158 copies) in this same ranking.

Even in the case of a free product, the awareness of the public still has to be proven by the opponent when reputation is claimed. An indicator of public awareness could be the number of magazines that have actually reached end users as opposed to figures for the number of copies distributed. It is not uncommon for free copies to be left in various places for passers-by to collect, but this does not necessarily mean that all of these copies will be picked up. The circulation figures alone merely suggest that a certain number of copies are printed and distributed; they do not indicate how many reach end users. Even if all the copies of the opponent’s magazine distributed do reach end users (readers), it should be noted that the number of copies ‘circulated’ by the opponent was less than 430 000 during the six-month periods (within the relevant timeframe); such distribution figures are not in any way significant for the market of the United Kingdom, which is a country with a population of more than 63 000 000 people.

It is also noted that the magazine market is very competitive and extremely dynamic, as new titles constantly appear as print and/or online versions, and there is a variety of goods (magazines and newspapers) to choose from on practically any topic. Therefore, a peak could very easily be followed by a decrease, and so, in opposition proceedings, in order to prove reputation for a magazine, it is important to show that its recognition by the public is stable and existed at the priority date of the contested sign.

Of the five submitted articles about awards received, only three are dated before the relevant date and, furthermore, they refer to the achievements of a specific person and not to the recognition of the trade mark for the relevant goods/services. Therefore, these articles, even though they do refer to the magazine Stylist, do not provide information about the awareness of the relevant public of the magazine itself.

The award-related articles dated after the relevant date (two articles) also highlight the achievements of specific journalists, and one of these, which refers to the ‘Consumer Media Brand of the Year’ (from www.guardian.co.uk), is dated in 2012 and there is no information regarding whether the data (or the results) on which the award was based related to the relevant period or strictly concerned the year in which it was awarded. Therefore, the evidence submitted about awards does not provide information on the recognition of the mark by the relevant public for the relevant goods or services before the priority date of the contested sign.

Finally, the opponent submits several advertisements from its magazine for products that are apparently advertised in the magazine. It also provides a list of advertisers. The latter was drafted by the opponent and there is no further endorsement by the advertising entities themselves or independent sources. Even though the advertisements relate to some of the services in Class 35 for which the opponent claims reputation (e.g. the provision of advertising space), there is no information on sales volumes or the market share of the trade mark with regard to these services, or the extent to which the trade mark has been promoted. Furthermore, there is no evidence relating to the rest of the goods and services in Classes 9, 16, 35 and 41 for which reputation is claimed.

As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public for any of the relevant goods and services. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation for any of the goods or services for which reputation is claimed.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

CONCLUSION

It follows from the above that the opposition is rejected on the grounds of Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Claudia SCHLIE

Eamonn KELLY

Julie GOUTARD

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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