The NOBLE PORTER: Delivering Excellence | Decision 2689514 – The Net-a-Porter Group Limited v. Noble Porter Limited

OPPOSITION No B 2 689 514

The Net-a-Porter Group Limited, 1 The Village Offices, Westfield, Ariel Way, London W12 7GF, United Kingdom (opponent), represented by HGF Limited, 8th Floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative)

a g a i n s t

Noble Porter Limited, 7 Westmoreland House, Cumberland Park, Scrubs Lane, London, London City of, NW10 6RE, United Kingdom (applicant).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 689 514 is partially upheld, namely for the following contested goods and services:

Class 9: Computer programs and software; apparatus for recording, transmission or reproduction of data, sound or images; data processing equipment; databases; computer application software for portable electronic devices; computer software and computer programs for ecommerce; data systems using Internet and other technology; software used for marketing and advertising purposes; software downloadable from the Internet; downloadable electronic publications; computer apparatus for the management of telephone calls; software applications for use with mobile devices; website development software.

Class 42: Design and development of computer hardware and software; design and development of computer hardware and software for marketing, advertising, data collection, data processing, research purposes; software as Service (SaaS) featuring computer software to allow users to perform electronic business transactions in the field of ecommerce; product development; product design and development; creating and maintaining websites for mobile phones; IT security and protection; data security services; design and development of electronic data security systems.

Class 45: Personal shopper services; concierge services; concierge services for others comprising making requested personal arrangements and proving customer-specific information to meet the needs of individuals.

2. European Union trade mark application No 14 518 451 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely:

Class 9: Credit cards; prepaid cards, magnetic, charge, discount and encoded cards; apparatus for electronic payment processing.

Class 39: Transportation and delivery of goods; courier services; delivery services; parcel delivery services; delivery of parcels and packets; food delivery services; car hire; car hire services; booking agency services for car hire; arranging of car hire.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 518 451. The opposition is based on the following earlier rights:

1. European Union trade mark registration No 9 447 772 ‘MR PORTER’ for services in Class 35.

2. European Union trade mark registration No 12 129 144 ‘MR PORTER’ for goods and services in Classes 9, 16 and 41.

3. European Union trade mark registration No 10 961 134 ‘MRPORTER’ for services in Classes 35, 38, 42 and 45.

4. European Union trade mark application No 11 828 977 ‘PORTER’ for goods and services in Classes 9, 16, 35 and 41.

5. European Union trade mark registration No 9 467 441 ‘NET-A-PORTER’ for goods and services in Class 9, 16 and 41.

6. European Union trade mark registration No 10 961 142 ‘.MRPORTER’ for services in Classes 35, 38, 42 and 45.

7. United Kingdom national trade mark registration No 2 375 992 ‘NET-A-PORTER’ for services in Classes 38 and 41.

8. United Kingdom national trade mark application No 3 061 517 ‘MR PORTER’ for goods and services in Classes 3, 4, 9, 14, 16, 18, 21, 24, 25, 28, 38, 41 and 45.

9. United Kingdom national trade mark registration No 2 548 521 ‘MR N PORTER’ for services in Class 35.

10. United Kingdom national trade mark registration No 2 548 518 for the series ‘MR PORTER’, ‘MR. PORTER’ for services in Class 35.

11. International trade mark registration No 969 606 designating the European Union ‘NET-A-PORTER’ for services in Class 35.

In relation to the above eleven rights the opponent invoked Article 8(1)(b) and 8(5) EUTMR.

12. Non-registered trade mark ‘MR PORTER’ used in the course of trade of more than mere local significance in Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

13. Non-registered trade mark ‘MR PORTER’ used in the course of trade of more than mere local significance in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

14. Non-registered trade mark ‘MR PORTER’ used in the course of trade of more than mere local significance in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

15. Non-registered trade mark ‘MRPORTER’ used in the course of trade of more than mere local significance in Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

16. Non-registered trade mark ‘PORTER’ used in the course of trade of more than mere local significance in Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

17. Non-registered trade mark ‘NET-A-PORTER’ used in the course of trade of more than mere local significance in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

18. Non-registered trade mark ‘NET-A-PORTER’ used in the course of trade of more than mere local significance in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

19. Non-registered trade mark ‘MR N PORTER’ used in the course of trade of more than mere local significance in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the goods and services in Classes 9, 35, 38, 39, 41, 42 and 45.

In relation to the above eight rights the opponent invoked Article 8(4) EUTMR.

I PRELIMINARY REMARK

The European Union trade mark application No 11 828 977 ‘PORTER’ for goods and services in Classes 9, 16, 35 and 41 has been withdrawn by the opponent in the current proceedings (applicant regarding the filing of the application No 11 828 977) with a letter to the Office dated 21/04/2017. The Office confirmed the withdrawal in a letter dated 08/05/2017. Therefore, this earlier right ceased to exist and cannot serve as a basis of the opposition.

II 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 European Union trade mark registration No 12 129 144 ‘MR PORTER’ and European Union trade mark registration No 10 961 134 ‘MRPORTER’.

The goods and services

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

European Union trade mark registration No 12 129 144:

Class 9: Information in electronic form; electronic downloadable publications in the fields of fashion, news, lifestyle, culture, entertainment, travel, social networking; electronic applications for electronic telecommunications equipment.

Class 16: Paper and cardboard; goods made from paper and cardboard; bookbinding material; wrapping and packaging materials; plastic materials for packaging; gift wrapping; paper and plastic bags; tissue paper; prints, posters; book covers; printed publications; printed matter, namely magazines and publications in relation to fashion and lifestyle; books; address books; pamphlets; manuals; magazines; periodical publications; newspapers; newsletters; decalcomanias; pressure sensitive stickers; photographs; cards; greeting cards; gift tags; calendars; diaries, postcards, posters, stationery; writing or drawing implements; tissues; calendars; office requisites.

Class 41: Education services for providing electronic media or information over the internet or other communications network; entertainment services, namely, providing multimedia content or information over the internet and (or) other communications network; entertainment services; educational services; entertainment and educational services featuring electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and related information via computer and communications networks; entertainment and educational services; digital video, audio and multimedia entertainment publishing services; publishing services; electronic publishing; magazine publishing; on-line electronic publishing of books, periodicals and magazines; providing on-line electronic publishing; providing publications from a global computer network or the internet which may be browsed; online digital publishing services; entertainment services; organising and operating talent shows and fashion shows; arranging talent contests and beauty contests; recording; production of films and of recordings; direction of films and performances; organising and conducting parties, festivals and entertainment events.

European Union trade mark registration No 10 961 134:

Class 35: Retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the bringing together for the benefit of others of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags enabling customers to conveniently view and purchase those goods; the provision of retail services via a mail order catalogue in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of on-line retail services from an internet website in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of retail services via a television channel in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of retail services via a telephone or mobile phone, portable Internet-enabled device, or other telecommunications device in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of retail services by way of direct marketing in connection with clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of information and advice in relation to retail services; business management consultancy; provision of advice and assistance in the selection of goods; advertising and business services; advertising for others; promotion services through provision of sponsored links to third party websites; advertising services.

Class 38: Telecommunication services; routing of Internet queries from end users to website hosting providers; data transmission, broadcast and reception services via telecommunication means; broadcast of cable television programs; broadcasting programs via a global computer network; cable radio broadcasting and transmission; cable, network and satellite television broadcasting and transmission services; transmitting streamed sound and audio-visual recordings via the internet; streaming of audio and video material on the internet; digital and electronic transmission of voice, data, sound, images, audio and video content, and messages; video-on-demand transmission services; providing on-line chat rooms and forums and electronic bulletin boards for transmission of messages among users concerning music and entertainment; providing wireless transmission of voice, music, mp3 files, graphics, games, images, videos, information and news via a global computer network to wireless mobile communication devices; sending and receiving voice and text messages between wireless communication devices; and providing multiple-user access to a global computer information network.

Class 42: Computer services for registering, managing and tracking computer network domain names, domain name registry services, namely, coordinating the registration of domain names for identification of users and internet protocol addresses on the Internet; providing an online computer database in the field of domain name registration information; verification of identities for the purpose of permitting or denying access to information and services.

Class 45: Provision of information and advice in the field of fashion; providing advice and assistance in the selection of fashion goods; providing on-line information in the field of fashion, via the internet and other electronic communications networks; registration of domain names for identification of users on a global computer network.

The contested goods and services are the following:

Class 9: Computer programs and software; apparatus for recording, transmission or reproduction of data, sound or images; data processing equipment; databases; computer application software for portable electronic devices; computer software and computer programs for ecommerce; data systems using Internet and other technology; software used for marketing and advertising purposes; software downloadable from the Internet; downloadable electronic publications; computer apparatus for the management of telephone calls; credit cards; prepaid cards, magnetic, charge, discount and encoded cards; apparatus for electronic payment processing; software applications for use with mobile devices; website development software.

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 9

The contested downloadable electronic publications includes, as a broader category, the opponent’s electronic downloadable publications in the fields of fashion, news, lifestyle, culture, entertainment, travel, social networking. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods they are considered identical to the opponent’s goods.

The opponent’s electronic applications for electronic telecommunications equipment are application software designed to run on telecommunication equipment including mobile devices such as smartphones and tablets. They are either identical or in any case at least similar to the contested goods: computer programs and software; computer application software for portable electronic devices; computer software and computer programs for ecommerce; software used for marketing and advertising purposes; software downloadable from the Internet; software applications for use with mobile devices; website development software either because they include, are included in, or overlap with these goods (for instance computer programs and software) or because they coincide in some of the relevant factors specified above such as nature, producer, method of use and end user (for instance website development software).

Apparatus for recording, transmission or reproduction of data, sound or images is used to communicate data, audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line. Telecommunication services allow people to communicate with one another by remote means. Consumers use apparatus for recording, transmission or reproduction of sound or images, computers and telephones when they want to communicate with others. There is a link between these goods in Class 9 (telecommunication apparatus) and the services in Class 38 (telecommunication services). They are similar because they are complementary, and even though their nature is different, their purposes and distribution channels are the same. Bearing in mind the above, the contested apparatus for recording, transmission or reproduction of data, sound or images; computer apparatus for the management of telephone calls; are similar to the opponent’s telecommunication services in Class 38.

The contested data processing equipment; data systems using Internet and other technology are similar to the opponent’s electronic applications for electronic telecommunications equipment, as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested databases are similar to the opponent’s providing an online computer database in the field of domain name registration information in Class 42 as they can coincide in producer/provider, distribution channels and end users. Furthermore, they are complementary.

The contested credit cards; prepaid cards, magnetic, charge, discount and encoded cards; apparatus for electronic payment processing are specific goods which do not show any resemblance to the opponent’s goods and services in light of the relevant criteria. Their nature and method of use are quite different. They clearly serve different purposes and are, therefore, also not in competition. Neither do they coincide in producer and distribution channels. There is also no complementarity relationship in the sense that the goods and services under comparison are indispensable for the use of each other. These contested goods are dissimilar to any and all of the opponent’s goods and services.

Contested services in Class 39

The contested transportation and delivery of goods; courier services; delivery services; parcel delivery services; delivery of parcels and packets; food delivery services; car hire; car hire services; booking agency services for car hire; arranging of car hire are dissimilar to any and all of the opponent’s goods and services since they do not coincide in any of the relevant criteria specified above which taken alone or in combination could result in a level of similarity.

Contested services in Class 42

The contested IT security and protection; data security services; design and development of electronic data security systems are highly similar to the opponent’s verification of identities for the purpose of permitting or denying access to information and services as they coincide in purpose, providers, distribution channels and end users.

The contested design and development of computer hardware and software; design and development of computer hardware and software for marketing, advertising, data collection, data processing, research purposes; software as Service (SaaS) featuring computer software to allow users to perform electronic business transactions in the field of ecommerce are considered similar to the opponent’s electronic applications for electronic telecommunications equipment. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary.

The contested product development; product design and development as far as classified in Class 42 and taking into account also the other services applied for in this class should be interpreted as relating to the theoretical and practical aspects of complex fields of activities, in particular computer programmers. To this extent they are considered similar to the opponent’s electronic applications for electronic telecommunications equipment for the same reasons as those explained in the previous paragraph.

The contested creating and maintaining websites for mobile phones is similar to the opponent’s providing wireless transmission of voice, music, mp3 files, graphics, games, images, videos, information and news via a global computer network to wireless mobile communication devices as they can coincide in provider, distribution channels and end users. Furthermore, they are complementary.

Contested services in Class 45

The contested personal shopper services; concierge services; concierge services for others comprising making requested personal arrangements and proving customer-specific information to meet the needs of individuals are similar to the opponent’s provision of information and advice in the field of fashion; providing advice and assistance in the selection of fashion goods, as they can coincide in provider, distribution channels and end user. Furthermore, even if they are not strictly complementary, they are often provided in combination.

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 and services found to be identical or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price, or terms and conditions of the purchased goods and services.

The signs

MR PORTER

(1) EUTM No 12 129 144

MRPORTER

(2) EUTM No 10 961 134

Earlier trade marks

Contested sign

The relevant territory is the European Union.

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

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

The earlier marks are word marks and the contested sign is a figurative mark. In English, ‘PORTER’ is an English family name, a type of drink and a person employed to carry luggage, parcels, supplies etc., especially at a railway station or hotel. In the earlier mark (1) the abbreviation MR, clearly separated by the following word will be perceived as a title used before a man's name or names or before some office that he holds. Consequently part of the relevant public will perceive the earlier mark (1) as a whole as relating to a male by referring to his surname. Another part of the public will perceive the earlier mark (1) as a whole as respectfully referring to a male person holding the position of a porter.

It is to be noted in relation to the earlier mark (2) that the relevant public may perceive one-word signs as composed of different components, in particular, in cases where at least one of the components has a clear and evident meaning. This would be the case with earlier mark (2). Therefore, it will also be perceived as a meaningful expression in one of the same two possible ways as outlined in relation to earlier mark (1) in the previous paragraph above.

The earlier marks have no elements which can be considered more dominant (visually eye-catching) than other elements.

As to the distinctiveness of MR and PORTER, it is to be noted that even though in relation to the goods and services at hand both elements do not show a descriptive connotation, the word PORTER retains a higher level of distinctiveness since MR is just the very usual way of referring to or approaching a male person, where PORTER serves as the main indicator of the commercial origin of the goods and services marketed under the two marks and is, therefore, to be determined as the element of higher distinctiveness.

The contested sign comprises the verbal elements ‘The NOBLE PORTER delivering excellence’ and a presentation of a walking male figure in a suit and a top hat carrying a suitcase in his left hand and what look like presents in his right hand.

Two semantic units can be identified among the verbal elements of the contested trade mark. The first one is ‘The noble porter’ and the second one is ‘Delivering excellence’.

As part of the particular expression the word ‘noble’ will be perceived as an adjective clarifying that the porter is of superior quality, having eminence, grand, imposing, characterized by high moral qualities. It is to be noted that this meaning bears a certain level of laudatory character. Bearing in mind what has been stated about the meaning of the word porter above, the whole expression will be perceived as a person employed to carry luggage, parcels, supplies etc., especially at a railway station or hotel, which has eminence, is characterised by high moral qualities and provides superior quality in performing his duties. This is also the concept portrayed by the figurative element of the contested sign.

The second semantic unit to be identified by the relevant public among the verbal elements of the contested sign will be clearly perceived by the English-speaking consumer as a laudatory message describing the provision of a particular service to the highest possible standards in terms of quality, speed, clients’ satisfaction, etc.

The verbal elements ‘The NOBLE PORTER’ are written in a significantly bigger size as compared to the verbal elements ‘delivering excellence’. Moreover, due to the different typescripts the verbal elements ‘NOBLE PORTER’ stand out visually also as compared to the definite article ‘The’. It can be concluded that the verbal elements ‘NOBLE PORTER’ and the figurative element are the dominant elements of the contested sign.

Visually, the signs coincide in ‘PORTER’ and differ in all other elements as described in detail above. Bearing in mind what has been stated in relation to the distinctiveness of MR and ‘delivering excellence’ it is to be concluded that the signs are similar to an average degree.

Aurally, the abbreviation MR of the earlier marks will be pronounced as /MISTA/. The pronunciation of the signs coincides in the verbal element ‘PORTER’ and differs in all the remaining verbal elements. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived generally with the concept of a person employed to carry luggage, parcels, supplies etc., especially at a railway station or hotel the signs are conceptually highly similar. The addition of some laudatory concepts such as ‘noble’ in relation to ‘porter’ and ‘delivering excellence’ as a promotional message added to the concept of the entire contested mark or the abbreviation ‘MR’ of the earlier mark which distinctiveness has also been determined as in any case lower than the distinctiveness of ‘PORTER’, do not significantly alter the concept of the contested trade mark as a whole mainly vested in the word ‘PORTER’ and the figurative element which both reinforce each other in conveying this very same concept.

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

Distinctiveness of the earlier marks

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

According to the opponent the earlier trade marks have a reputation in connection with all of the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Nevertheless, at this stage of the examination the Opposition Division does not find it necessary to examine the distinctiveness of the earlier marks filed by the opponent to prove this claim (see below in ‘Global assessment’) and will proceed based on their distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services 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 what has been stated in relation to MR being of lower distinctiveness as compared to the word ‘PORTER’.

Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. The marks are visually and aurally similar to an average degree, and conceptually similar to a high degree. The level of attention varies from average to higher than average. The distinctiveness of the earlier marks per se is normal.

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.

The concept of the earlier marks ‘MR PORTER’/’MRPORTER’ is reproduced in the contested sign where the differences between ‘MR’ and ‘NOBLE’ as identifiers/qualifiers of the main word ‘PORTER’ are not as significant as to prevent consumers from immediately linking the signs under comparison on a conceptual level. Bearing in mind that the figurative element in the contested sign only reinforces this concept and taking into account also the average level of visual and oral similarity, the Opposition Division finds that the overall impression produced by the contested sign may lead the public to believe that the goods and services at issue, derive from the same company or at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In such a case even the increased degree of attention cannot be considered a counterbalancing factor capable of safely excluding the likelihood of association.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 129 144 ‘MR PORTER’ and European Union trade mark registration No 10 961 134 ‘MRPORTER’. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The same is valid also for the opponent’s argument of family of marks. Even under the assumption that the opponent proved the existence of family of marks, the result cannot be any different in relation to the dissimilar goods and services.

The opposition under Article 8(1)(b) EUTMR is also based on eight other earlier rights covering the following goods and services:

1. European Union trade mark registration No 9 447 772 ‘MR PORTER’:

Class 35 The provision of on-line retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, from an internet website; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, via a television channel; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, via a telephone or mobile phone or telecommunications device; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, by way of direct marketing; the provision of information and advice in relation to retail services; business management consultancy; provision of advice and assistance in the selection of goods; advertising for others.

2. European Union trade mark registration No 9 467 441 ‘NET-A-PORTER’:

Class 16 Paper and cardboard; goods made from paper and cardboard; bookbinding material; wrapping and packaging materials; plastic materials for packaging; gift wrapping; paper and plastic bags; tissue paper; prints, posters; book covers; printed publications; printed matter, namely magazines and publications in relation to fashion and lifestyle; books; address books; pamphlets; manuals; magazines; periodical publications; newspapers; newsletters; decalcomanias; pressure sensitive stickers; photographs; cards; greeting cards; gift tags; calendars; diaries, postcards, posters, stationery; writing or drawing implements; tissues; calendars; office requisites.

Class 41 Education services for providing electronic media or information over the internet or other communications network; entertainment services, namely, providing multimedia content or information over the internet and (or) other communications network; entertainment services; educational services; entertainment and educational services featuring electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and related information via computer and communications networks; entertainment and educational services; digital video, audio and multimedia entertainment publishing services; publishing services; electronic publishing; magazine publishing; on-line electronic publishing of books, periodicals and magazines; providing on-line electronic publishing; providing publications from a global computer network or the internet which may be browsed; online digital publishing services; entertainment services; organising and operating talent shows and fashion shows; arranging talent contests and beauty contests; recording; production of films and of recordings; direction of films and performances; organising and conducting parties, festivals and entertainment events.

3. European Union trade mark registration No 10 961 142 ‘.MRPORTER’:

Class 35 Retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the bringing together for the benefit of others of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags enabling customers to conveniently view and purchase those goods; the provision of retail services via a mail order catalogue in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of on-line retail services from an internet website in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of retail services via a television channel in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of retail services via a telephone or mobile phone, portable Internet-enabled device, or other telecommunications device in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of retail services by way of direct marketing in connection with clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the provision of information and advice in relation to retail services; business management consultancy; provision of advice and assistance in the selection of goods; advertising and business services; advertising for others; promotion services through provision of sponsored links to third party websites; advertising services.

Class 38 Telecommunication services; routing of Internet queries from end users to website hosting providers; data transmission, broadcast and reception services via telecommunication means; broadcast of cable television programs; broadcasting programs via a global computer network; cable radio broadcasting and transmission; cable, network and satellite television broadcasting and transmission services; transmitting streamed sound and audio-visual recordings via the internet; streaming of audio and video material on the internet; digital and electronic transmission of voice, data, sound, images, audio and video content, and messages; video-on-demand transmission services; providing on-line chat rooms and forums and electronic bulletin boards for transmission of messages among users concerning music and entertainment; providing wireless transmission of voice, music, mp3 files, graphics, games, images, videos, information and news via a global computer network to wireless mobile communication devices; sending and receiving voice and text messages between wireless communication devices; and providing multiple-user access to a global computer information network.

Class 42 Computer services for registering, managing and tracking computer network domain names, domain name registry services, namely, coordinating the registration of domain names for identification of users and internet protocol addresses on the Internet; providing an online computer database in the field of domain name registration information; verification of identities for the purpose of permitting or denying access to information and services.

Class 45 Provision of information and advice in the field of fashion; providing advice and assistance in the selection of fashion goods; providing on-line information in the field of fashion, via the internet and other electronic communications networks; registration of domain names for identification of users on a global computer network.

4. United Kingdom national trade mark registration No 2 375 992 ‘NET-A-PORTER’:

Class 38 Broadcasting and transmission of television, radio, cable, digital, satellite and Internet programs; telecommunication of information (including web pages), computer programs and any other data; electronic mail services; provision of telecommunication access and links to computer databases and the Internet; consultancy, information and advisory services relating to the aforesaid.

Class 41 Entertainment services; television entertainment services; entertainment services in the form of television programmes; production and presentation of television programmes, shows, films and videos, production and presentation of radio, cable, digital, satellite and Internet programmes; publishing services; educational services relating to entertainment; information relating to entertainment or education, provided on-line from a computer database or the Internet; consultancy, information and advisory services relating to the aforesaid.

5. United Kingdom national trade mark application No 3 061 517 ‘MR PORTER’:

Class 3 Personal care products, namely, soap, after shave emulsions, after shave balm, after shave lotion, nonmedicated alum block for use after shaving, antiperspirant, cosmetic astringent for the face and skin, bath additives in the nature of skin moisturizers and aromatherapy oils, bath gel, bath oil, non-medicated bath soaks, shower gel, blush, non-medicated body balm, facial and skin cleansers, skin moisturizer; body and beauty care preparations, namely, non-medicated body ointments and salve, spot cream, body scrub, body wash, cleansing cream, cold cream, cologne, cosmetics, cosmetic kits and cosmetic gift sets, dentifrice, deodorants for personal use, depilatories, dusting powder, essential oils for personal use, eye cream, eye gel, eyeliner, eye shadow, face cleanser, face cream, cosmetics, namely, face gel, anti-ageing cream, line plumper; face lotion, face mask, face mist, face moisturizer, face powder, face scrub, non-medicated face serum, face toner, face wash, foot cream, non-medicated foot powder, non-medicated foot salve, fragrances for personal use, hair bleaches, hair conditioner, hair detangler, hair pomade, hair shampoo, dry shampoo, hair styling preparations, hair waxes, hand cleanser, lip buffer, lip exfoliator, non-medicated lip care preparations in the nature of salves, lip balms, lip shine, lip stick, liquid cleansers for the face and skin, make up remover, mascara, massage cream, massage oil, nonmedicated mouthwash, tooth paste, nail cream, nail polish, cuticle oil, non-medicated nose balm, perfumes, eau du toilette, eau de parfum, colognes, sun tanning cream, sun tanning lotion, bronzer, pumice stone for personal use, scented room spray, non-medicated body salve, namely, rose salve, toilet water, namely, rose water, shaving balm, shaving cream, shaving gel, shave lather, shower gel, skin cream, skin lotion, skin tonic, nonmedicated sun care preparations, talcum powder, medicated soaps; salts not for medical purposes; shaving preparations.

Class 4 Candles.

Class 9 Information in electronic form; electronic downloadable publications in the fields of fashion, news, lifestyle, culture, entertainment, travel, social networking; electronic applications for electronic telecommunications equipment; leather phone covers, leather computer cases; leather camera case; glasses, sunglasses; speakers, speaker docks; headphones; music systems.

Class 14 Horological and/or chronometric instruments; watches; key fobs; key rings [trinket or fobs]; key chains as jewellery [trinkets or fobs]; jewellery, earrings, necklaces, rings, bracelets, cuffs (jewellery), cufflinks, tie clips, tie pins; costume jewellery; statues or statuettes of precious metal; articles made of or coated with precious metal or their alloys and articles including precious stones namely, horological and/or chronometric instruments, watches, key fobs, key rings, key chains, jewellery, earrings, necklaces, rings, bracelets, cuffs and cufflinks, tiepins, tie clips, money clips, custom jewellery, statues or statuettes, jewellery boxes and watch boxes; precious stones; jewellery boxes and watch boxes.

Class 16 Printed publications; printed matter, namely magazines and publications in relation to fashion and lifestyle; books; address books; pamphlets; manuals; magazines; periodical publications; newspapers; newsletters; decalcomanias; photographs; cards; greeting cards; gift tags; calendars; diaries, postcards, posters, stationery, stationery sets; writing or drawing implements, pens; tissues; calendars; leather book covers; leather diary covers; office requisites; bookends; paperweights; passport covers; leather bureau; pen sleeves; money clips; organisers; passport holders.

Class 18 Leather; imitation leather; goods made of leather or imitation leather namely, travel trunks, luggage, bags, cases and belts; travel trunks; luggage, bags and cases, beach bags, toiletry bags; suitcases; briefcases, attaché cases, holdalls, pochettes, garment bags, backpacks, credit card cases and holders, handbags; shoulder bags, leather notecases, totes, clutch bags, travel bags; pocket books; knapsacks, haversacks, rucksacks, shopping bags; carryalls; travelling sets; valises; vanity cases and bags sold empty; beauty cases sold empty; toilet bags and make-up bags sold empty; document cases; harnesses, straps and belts; sports bags; luggage tags, travel cases, cosmetic bags sold empty; walking sticks; umbrellas; purses; wallets; satchels.

Class 21 Brushes; nail brushes, hair brushes, hair brushes, shaving brushes, clothes brushes, shoe brushes; tooth brush stands; combs; shaving brush holders; shaving stands, dishes, pots and bowls; flasks; shoe polish kit, shaving set, shoe horns.

Class 24 Textiles and textile goods; handkerchiefs; blankets.

Class 25 Jumpers, knitwear; sweatshirt, t-shirt, shorts, jackets, blazers, coats, blouses, shirts, pullovers, cardigans, vests, dresses, skirts, pants, trousers, jeans, jumpsuits, suits, beachwear, sweaters; evening wear; waistcoats, suits; scarves; shawls; swimwear, beachwear; active wear; lounge wear; sleepwear, pyjamas; leisurewear, sportswear; lingerie, camisoles; bodices; underwear; underclothing; garters; garter belts; bathrobes; ties, neckties, bow ties, cravats, belts; gloves; hosiery, stockings, tights, socks; knitwear, hooded tops, gilet, polo shirt, dressing gown, sweat pants, swim shorts, swim trunks, skiing trousers, leggings, running tights, skiing tights, waterproof sailing trousers, tuxedos, boxer briefs, boxer shorts, briefs, thermal underwear; footwear, namely shoes, boots, ankle boots, sandals, sport shoes, leisure shoes, loafers, canvas shoes, boat shoes, brogues, driving shoes, espadrilles; slippers; headgear namely hats and caps.

Class 28 Games and playthings; toys; sporting apparatus; sporting articles; toys games and playthings; board games; poker sets; black gammon sets; chess games; chess boards; playing cards; surfboards; skateboards; snowboards; kites; net for sports; scooters; in-line skates; skis; balls for games, teddy bears, dolls, ornaments for Christmas trees, Christmas decorations.

Class 38 Telecommunication services; data transmission, broadcast and reception services via telecommunication means; broadcast of cable television programs; broadcasting programs via a global computer network; cable radio broadcasting and transmission; cable, network and satellite television broadcasting and transmission services; transmitting streamed sound and audio-visual recordings via the internet; streaming of audio and video material on the internet; digital and electronic transmission of voice, data, sound, images, audio and video content, and messages; video-on-demand transmission services; providing on-line chat rooms and forums and electronic bulletin boards for transmission of messages among users concerning music and entertainment; providing wireless transmission of voice, music, mp3 files, graphics, games, images, videos, information and news via a global computer network to wireless mobile communication devices; sending and receiving voice and text messages between wireless communication devices; and providing multiple-user access to a global computer information network.

Class 41 Entertainment and educational services featuring electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and related information via the internet and other communications networks in the field of fashion, general interest, cultural events and entertainment related topics; production of films on videotapes or on all types of audio visual or sound media in the field of fashion, general interest, cultural events and entertainment related topics; production of television and radio programs; electronic publishing of on-line books, magazines and periodicals in the field of fashion, general interest, cultural events and entertainment related topics; providing on-line electronic publications (not downloadable) in the field of fashion, general interest, cultural events and entertainment related topics; digital video, audio and multimedia entertainment publishing services in the field of fashion, general interest, cultural events and entertainment related topics; online digital publishing services in the field of fashion, general interest, cultural events and entertainment related topics; fashion show services, production of fashion shows provided online from a computer database or the internet or transmitted via wireless communication device or broadcast via network or satellite television; news reporting; providing information about entertainment, current events, cultural events and activities; publication of electronic applications for fashion, entertainment; consultancy, information and advisory services relating to the aforesaid; providing electronic library services containing images, pictures, photographs, text and other multimedia content via an online computer network and other electronic communication networks or broadcast via network or satellite television; publishing online journals, namely blogs featuring personal information and opinions; publishing services, namely photo sharing via the internet and wireless communication devices; organising entertainment and cultural events; entertainment in the nature of contests, competitions and games; education, entertainment, sporting and cultural activities.

Class 45 Provision of personal fashion, fashion news, fashion trend advice and assistance in the selection of goods in the nature of style advice on the types of clothes, headwear, footwear, jewellery, eyewear and accessories to wear and use for different occasions or in varying environments, and styling advice on how to wear and present clothing, headwear, footwear, jewellery, eyewear and accessories in the form of a personal shopper service; provision of informational, non-downloadable photographic, audio and video and text presentations in the field of fashion, personal fashion, fashion news and fashion trends via a website.

6. United Kingdom national trade mark registration No 2 548 521 ‘MR N PORTER’:

Class 35 The provision of on-line retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, from an Internet website; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, via a television channel; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, via a telephone or mobile phone or telecommunications device; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, by way of direct marketing; the provision of information and advice in relation to retail services; business management consultancy; provision of advice and assistance in the selection of goods; advertising for others.

7. United Kingdom national trade mark registration No 2 548 518 for the series ‘MR PORTER’, ‘MR. PORTER’:

Class 35 The provision of on-line retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, from an Internet website; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, via a television channel; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, via a telephone or mobile phone or telecommunications device; the provision of retail services connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, by way of direct marketing; the provision of information and advice in relation to retail services; business management consultancy; provision of advice and assistance in the selection of goods; advertising for others.

8. International trade mark registration No 969 606 ‘NET-A-PORTER’:

Class 35 Retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags, the bringing together for the benefit of others of the aforesaid goods enabling customers to conveniently view and purchase such goods; the provision of retail services via a mail order catalogue for the aforesaid goods; the provision of on-line retail services from an Internet website for the aforesaid goods; the provision of retail services via a television channel for all the aforesaid goods; the provision of retail services via a telephone or mobile phone for all the aforesaid goods; the provision of retail services by way of direct marketing; the provision of information and advice in relation to retail services; business management consultancy; provision of advice and assistance in the selection of goods; advertising for others.

With the exception of the earlier United Kingdom national trade mark application No 3 061 517, all other earlier rights cover largely the same scope of goods and services as the two earlier rights on which the examination above was based. To this extent the outcome of the opposition based on these other earlier rights under the ground of Article 8(1)(b) EUTMR cannot be any different in relation to the goods and services found dissimilar.

The goods and services covered by the earlier United Kingdom national trade mark application No 3 061 517 in classes 3, 4, 9, 14, 16, 18, 21, 24, 25, 28, 38, 41 and 45 are also considered dissimilar to the remaining contested goods and services in classes 9 and 39. There are no relevant points of contact taking into account the criteria specified above which taken alone or in combination can lead to a finding of any level of similarity.

This is also the reason why the Opposition Division does not find it appropriate to suspend the case according to Article 20(7)(a) EUTMIR until the registration of this earlier right.

In relation to the dissimilar goods and services, namely:

Class 9 Credit cards; Prepaid cards, magnetic, charge, discount and encoded cards; apparatus for electronic payment processing.

Class 39 Transportation and delivery of goods; courier services; delivery services; parcel delivery services; delivery of parcels and packets; food delivery services; car hire; car hire services; booking agency services for car hire; arranging of car hire.

the examination proceeds on the other grounds invoked by the opponent as basis of the opposition – Article 8(4) and 8(5) EUTMR.

III ASSESSMENT OF THE SUBMITTED EVIDENCE

The outcome of the opposition as far as it is based on earlier rights in relation to which the grounds of Article 8(4) and 8(5) EUTMR are invoked, depends to a great extent on the conclusions in relation to the evidence submitted by the opponent in order to prove the use of more than mere local significance of some of the rights and the reputation of others. Therefore, in this section the Opposition Division will first set out the submitted evidence in its entirety to determine if it has been proved that the signs invoked under Article 8(4) EUTMR were used in the course of trade of more than mere local significance and/or that the earlier rights invoked under Article 8(5) have a reputation.

In the present case, the contested trade mark was filed on 01/09/2015. Therefore, the opponent was required to prove that the signs on which the opposition is based under Article 8(4) were used in the course of trade of more than local significance and that the marks invoked under Article 8(5) acquired reputation in the designated territories prior to that date.

The evidence must also show that the signs invoked under Article 8(4) EUTMR, namely the non-registered trade marks ‘MR PORTER’, ‘MRPORTER’, ‘PORTER’, ‘NET-A-PORTER’ and ‘MR N PORTER’ have been used in the course of trade of more than mere local significance for the following goods and services:

Class 35 Retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, travel trunks, luggage, suitcases, holdalls, pouchettes, card cases and holders, leather book covers, leather phone covers, leather computer cases, rucksacks, shopping bags, belts, diary covers, luggage tags, passport holders, cosmetics bags, walking sticks, umbrellas, purses, wallets, satchels, handbags and all manner of bags; the bringing together for the benefit of others of clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, travel trunks, luggage, suitcases, holdalls, pouchettes, card cases and holders, leather book covers, leather phone covers, leather computer cases, rucksacks, shopping bags, belts, diary covers, luggage tags, passport holders, cosmetics bags, walking sticks, umbrellas, purses, wallets, satchels, handbags and all manner of bags enabling customers to conveniently view and purchase those goods; the provision of retail services via a mail order catalogue in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, travel trunks, luggage, suitcases, holdalls, pouchettes, card cases and holders, leather book covers, leather phone covers, leather computer cases, rucksacks, shopping bags, belts, diary covers, luggage tags, passport holders, cosmetics bags, walking sticks, umbrellas, purses, wallets, satchels, handbags and all manner of bags; the provision of on-line retail services from an internet website in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, travel trunks, luggage, suitcases, holdalls, pouchettes, card cases and holders, leather book covers, leather phone covers, leather computer cases, rucksacks, shopping bags, belts, diary covers, luggage tags, passport holders, cosmetics bags, walking sticks, umbrellas, purses, wallets, satchels, handbags and all manner of bags; the provision of retail services via a television channel in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, travel trunks, luggage, suitcases, holdalls, pouchettes, card cases and holders, leather book covers, leather phone covers, leather computer cases, rucksacks, shopping bags, belts, diary covers, luggage tags, passport holders, cosmetics bags, walking sticks, umbrellas, purses, wallets, satchels, handbags and all manner of bags; the provision of retail services via a telephone or mobile phone, portable Internet-enabled device, or other telecommunications device in relation to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, travel trunks, luggage, suitcases, holdalls, pouchettes, card cases and holders, leather book covers, leather phone covers, leather computer cases, rucksacks, shopping bags, belts, diary covers, luggage tags, passport holders, cosmetics bags, walking sticks, umbrellas, purses, wallets, satchels, handbags and all manner of bags; the provision of retail services by way of direct marketing in connection with clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, travel trunks, luggage, suitcases, holdalls, pouchettes, card cases and holders, leather book covers, leather phone covers, leather computer cases, rucksacks, shopping bags, belts, diary covers, luggage tags, passport holders, cosmetics bags, walking sticks, umbrellas, purses, wallets, satchels, handbags and all manner of bags; the provision of information and advice in relation to retail services; business management consultancy; provision of advice and assistance in the selection of goods; promotion services through provision of sponsored links to third party websites; advertising and business services; advertising for others.

Class 39 Delivery services.

And, under Article 8(5) EUTMR, that each of the earlier registered marks previously listed has acquired reputation for all the goods and services for which they are registered, as claimed by the opponent.

On 01/11/2016 the opponent submitted the following evidence:

Witness Statement dated 31/10/2016, signed by Kara Iselin acting as the Head of Legal of The Net-a-porter Group Limited, an attorney authorised to represent the Net-a-porter Group Limited in IP matters since 2015. The witness statement provides information, facts and figures related to the use and acquired reputation through use of the earlier rights claimed by the opponent and outlines the structure of the evidence submitted by the opponent in order to prove reputation.

Exhibit KI1 A screenshot of the Net-A-Porter.com website and a list of the designer brands available on the net-a-porter.com website in October 2012 and June 2014, including Alexander McQueen, Calvin Klein, Jimmy Choo, Gucci, Givenchy, Karl Lagerfeld, Christian Louboutin, Versace a.o.

Exhibit KI2 Printouts from the Net-A-Porter.com website showing different categories of goods offered for sale through the website: throws, blankets, pillows, candles, yoga mats, clothing, bags and shoes, headgear available on the website during the period 2012 – 2014.

Exhibit KI3-4 Invoices and courier delivery notes dated during the period 2007 – 2015, containing reference to the sign NET-A-PORTER.COM for sale of various articles of fashion such as leg pants, sandals, jerseys, leather boots, earrings, jeans, bags, pumps, belts, polo shirts, clutches and different kinds of designer clothing to clients mainly in the United Kingdom, where the price of a single order varies from GBP 78.50 to GBP 1,890.00, but also to clients throughout Europe – Austria, Belgium, Cyprus, Denmark, Spain, Portugal, the Czech Republic, Hungary, Netherlands, Germany, Sweden and Greece. The price of a single order varies from several hundred to several thousands of Euros.

Exhibits KI5 Statistical information, with no reference to the source, showing the number of viewings of the Net-A-Porter.com website for the periods July 2005 to December 2011, August 2012 to November 2013 and October 2013 to June 2015 for all European countries that are now members of the European Union. The statistical information sheet displays the number of internet sessions (visits, hits) and the number of orders resulting from these visits for each country. For the entire territory of the European Union the number of hits in total is several hundred millions and the number of orders in total is above one million.

Exhibit KI6 Promotional materials related to advertising campaigns of the opponent from websites such as www.vogue.co.uk, www.luxurydaily.com, www.harpersbazaar.com.au, telegraph.co.uk. According to the opponent, advertising expenditure for the NET-A-PORTER mark in the EU for the period 2009-20015 exceeded GBP 19 million.

Exhibit KI7 A copy of an article from the Guardian/Observer online edition dated 11/07/2010, highlighting the success of Net-A-Porter and its founder Natalie Massenet. According to the article, the luxury fashion site is valued at GBP 350 million as of the date of issuing the article. The article contains quotes from independent sources talking about the success of Net-A-Porter as a fashion online retailer, amongst them Rita Clifton, chairman of the global brand consultancy Interbrand, and Carol Ratcliffe, senior retail analyst for retail research company Verdict.

Exhibit KI8 Examples of awards and accolades received by Net-A-Porter and its founder Natalie Massenet for the period 2004–2014, including #1 For Retail Customer Service Performance; Best E-commerce experience; Best Website for fashion and beauty; Best website: Shopping in 2014; Best packaging in 2013; Achievement in Fashion and technology in 2012; Luxuria awards ‘Luxury retailer of the year’ in 2010; Cosmopolitan’s Online Fashion Awards ‘Best for Designer Clothing’; Drapers Awards ‘E-tailer of the Year’; Footwear News Achievement Awards ‘E-tailer of the Year’; Walpole Awards for Excellence ‘Luxury Brand Online’ in 2008; In Style Shopping Awards ‘Best Online Shop’ in 2006; the British Fashion Council ‘Best Shop’; and the UK Fashion Export Award for ‘Best E-tailer’ in 2004.

Exhibit KI9 Examples of celebrities and designers comments appearing in the media.

Exhibit KI10 Extracts from NET-A-PORTER’s Twitter, Facebook and Youtube social media accounts showing significant number of followers and ‘likes’.

Exhibit KI11 Examples of publications promoting Net-A-Porter.com in Italy, Romania, Spain, the UK, Greece, Germany and Portugal as well as examples of the mark as featured on packaging for the goods sold.

Exhibit KI12 An article from The Business of Fashion of June 2010 describing the launch of MR PORTER.

Exhibit KI13 Extracts from MR PORTER website and a list of designer brands available on the MR PORTER website dated May 2014 and October 2016.

Exhibit KI14 Extracts from MR PORTER Twitter and Facebook accounts dated 26/10/2016, showing significant number of followers and ‘likes’.

Exhibit KI15 Press publications and online publications showing MR PORTER mark in use.

Exhibit KI16 Internet extracts with information on the PORTER magazine and the available subscription options in the UK, Belgium, France, Germany and Italy.

Exhibit KI17 Selection of online articles with references to the PORTER magazine.

Exhibit KI18 Decisions from the Administrative Panel of the World Intellectual Property Organisation Arbitration and Mediation Panel relating to disputed third party domain names, namely netaporter.net and netaporterdomain.com. In the decision related to the domain name netaporterdomain.com the Panel found that the trademarks of the complainant (the opponent in the current proceedings) are well-known throughout the world.

It is clear from the evidence that the sign ‘NET-A-PORTER’ has been subject to long-standing and intensive use since 2004 and is generally known at least in the United Kingdom, where it enjoys an established position among the leading brands, as has been attested by diverse independent sources. All the documents provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. The impressive sales figures and marketing expenditure, commercial rankings and numerous awards, and the various references in the press to its success by prominent designers all unequivocally show that the mark enjoys a high degree of recognition among the relevant public and is associated with an elegant lifestyle, exclusivity and luxury. The well-known character of the mark ‘NET-A-PORTER’ was confirmed also in the decisions of the Arbitration and Mediation Panel of the World Intellectual Property Organisation. It is also clear from the evidence that the opponent’s trade under the sign at issue was of more than mere local significance, as can be seen from the invoices and delivery receipts bearing addresses in United Kingdom, places where use of the opponent’s products was shown, the net of distributors used by the opponent and local magazines.

Consequently, the Opposition Division concludes that the opponent’s sign was used in the course of trade of more than mere local significance at least in the United Kingdom for the above mentioned services before the filing date of the contested trade mark.

However, the evidence does not succeed in establishing that the trade mark was used in the course of trade of more than local significance and/or acquired reputation for all the goods and services on which the opposition is based. The evidence only relates to online fashion retail services, whereas there is no or little reference to the remaining goods and services.

All in all, use of more than mere local significance and reputation has been proven for the following services:

The Opposition Division notes that the vast majority of the evidence contains references to the sign ‘NET-A-PORTER’, while the materials referring to the signs ‘PORTER’ and ‘MR PORTER’ are limited to an article informing about the launch of the trade marks, extracts from the website ‘MR PORTER’, covers of the ‘PORTER’ magazine and information about presence of ‘MR PORTER’ in social media, without further details as to the circulation figures and geographical coverage, origin of the visits to the social media sites, etc.

Consequently, no use of more than mere local significance and/or reputation has been proven in relation to all of the other earlier rights and the opposition must therefore be rejected as far as it is based on these rights. The examination proceeds based on the following earlier rights of the opponent:

Non-registered trade mark ‘NET-A-PORTER’ used in the course of trade of more than mere local significance in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for some of the services in Classes 35, namely:

Non-registered trade mark ‘NET-A-PORTER’ used in the course of trade of more than mere local significance in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for some of the services in Classes 35, namely:

as far as the opposition is based on Article 8(4) EUTMR

and

International trade mark registration No 969 606 designating the European Union ‘NET-A-PORTER’ for the services in Class 35: Retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags, the bringing together for the benefit of others of the aforesaid goods enabling customers to conveniently view and purchase such goods; the provision of retail services via a mail order catalogue for the aforesaid goods; the provision of on-line retail services from an Internet website for the aforesaid goods.

In relation to the remaining earlier rights invoked under the grounds of Article 8(4) and 8(5) EUTMR the opposition must be rejected as unfounded since use of more than mere local significance and reputation are necessary conditions for the application of these provisions.

IV 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 [applicant][holder] establishes due cause for the use of the contested trade mark.

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

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation of the earlier trade mark has already been examined above in the section ‘Assessment of the submitted evidence’. Reference is made to those findings.

The signs

NET-A-PORTER

Earlier trade mark

Contested sign

The relevant territory is the European Union.

The contested sign has already been described and analysed in relation to its distinctive and dominant elements from the perspective of the English-speaking part of the public. The non-English speaking part of the public is not likely to grasp the concepts conveyed by the verbal elements but will only perceive the concept of a sharp dressed male figure carrying a suitcase and what look like presents without necessarily associating it with the particular occupation of a porter.

The earlier mark is a word mark. The ‘A-PORTER’ part of the sign alludes to the French expression for ready-to-wear clothing ‘pret-à-porter’, which is primarily used in the fashion domain and will be understood throughout the whole relevant territory.

In English, the word ‘NET’ will be associated with, among other meanings, an openwork fabric of string, rope, wire etc.; mesh. Due to intensive use in a certain context, ‘NET’ is nowadays understood throughout the relevant territory as the (informal) short form of ‘internet’. Therefore, the combination of ‘NET-’ and ‘A-PORTER’ in the earlier sign involves a use of ‘a-porter’ that does not comport with its traditional use in the fashion world. However, given the renown of the phrase ‘pret-a-porter’, the relevant consumer will see the ‘a-porter’ ending, in the similar sounding ‘NET-A-PORTER’, as clearly alluding to ‘pret-à-porter’. Consequently, the earlier mark ‘NET-A-PORTER’ as a whole refers in an intellectually engaging way to the concept of the internet and alludes more vaguely to ‘ready to wear’, ‘ready to use’ by using a formula traditionally associated with fashion.

The earlier sign has no element which can be considered more distinctive or dominant (visually more eye-catching) than other elements.

Visually, the signs coincide in ‘PORTER’ and differ in all other elements as described earlier in the decision. The signs are visually similar to a low degree.

Aurally, for the majority of the relevant public the stress of the verbal element ‘PORTER’ of the contested sign is on the first syllable. The earlier sign, on the other hand, because of its similarity with the French expression ‘pret-à-porter’, will be pronounced according to the French pronunciation rules, where the stress on ‘-porter’ will be on the second syllable. Therefore, apart from the oral differences in all other elements, namely ‘NET-A’ of the earlier and ‘THE NOBLE _ DELIVERING EXCELLENCE’ of the contested sign, the signs differ further aurally in the different pronunciation of the verbal element ‘PORTER’ in the different compositions of the signs: for the majority of the public the stress will be in a different position and the pronunciation of the last letter ‘R’ will differ, as it will not be pronounced in the earlier sign, but will be still pronounced in the contested sign in most of the relevant territories (although not that clear in some languages such as English). The signs will also clearly be pronounced with different rhythm and intonation. Since the signs coincide in irrelevant aspects it is concluded that they are not aurally similar.

Conceptually, the signs will be associated with the meanings described earlier in the decision. The concepts of the marks as a whole are dissimilar. Since the signs will be associated with dissimilar meanings, the signs are not conceptually similar.

Taking into account the abovementioned visual coincidences, it is considered that the signs under comparison are similar to a certain extent.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to a certain extent. 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.

It can be inferred from the above that the presence or lack of link between the signs should be assessed by taking into account the complex influence of the combination of all factors on the perception on behalf of the relevant consumer.

The Court has held in the ‘Intel Corporation’ judgment mentioned above that the sections of the public relevant for each of the goods and services covered by the trade marks in dispute are a factor to be taken into account when considering whether the existence of a ‘link’ can be justified. Therefore, before examining the opponent’s claims, the Opposition Division finds it useful to note that following the rejection of the remaining goods and services of the application after examining the case under Article 8(1)(b) EUTMR the opposition is directed against the following goods and services:

Class 9 Credit cards; prepaid cards, magnetic, charge, discount and encoded cards; apparatus for electronic payment processing.

As seen above, the earlier trade mark was found to have a reputation for retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags, the bringing together for the benefit of others of the aforesaid goods enabling customers to conveniently view and purchase such goods; the provision of retail services via a mail order catalogue for the aforesaid goods; the provision of on-line retail services from an Internet website for the aforesaid goods or, broadly speaking, retail of articles of fashion and fashion accessories, in particular and mainly online.

The Opposition Division considers, that (even though a possible overlap of the relevant public cannot be completely excluded) the relevant consumer will not see any link between the signs if used in relation to the earlier services with a reputation and the contested goods in Class 9 and the services in Class 39 that are not related to articles of fashion and/or the retail thereof.

The credit cards; prepaid cards, magnetic, charge, discount and encoded cards; apparatus for electronic payment processing are goods that are more real-world practical items and are more vocational and the aesthetic features are certainly not a characteristic which attracts the consumer’s attention or influence its purchase behaviour. They lack the link with fashion. The goods of the applicant in Class 9 are so remote from the services for which the earlier mark has a reputation, and from the fashion industry evoked by the ending of the earlier mark, that the Opposition Division finds it implausible that the consumer will perceive any link between the signs when used on these respective goods and services bearing in mind also the very low similarity between the signs.

The services transportation and delivery of goods; courier services; delivery services; parcel delivery services; delivery of parcels and packets; food delivery services; car hire; car hire services; booking agency services for car hire; arranging of car hire are professional services intended to transport people or goods from one place to another and services related to the provision of means of transport. These services are perceived by the public pretty much by their commercial importance and particular purpose rather than by their aesthetic characteristics (which are actually lacking). These services are too remote from the services for which the earlier mark has a reputation, and from the fashion industry evoked by the ending of the earlier mark, so that the Opposition Division finds it implausible that the consumer will perceive any link between the signs when used in relation to these respective services again bearing in mind that the similarity of signs is very low.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR also as far as it is based on the only earlier right for which reputation has been proven, namely International trade mark registration No 969 606 designating the European Union and must be rejected.

V NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The earlier rights on which the opposition is based and on which the opponent invoked Article 8(4) EUTMR have been listed in the ‘REASONS’ section of the decision.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

It has been established that only two of the earlier rights invoked under the Article 8(4) EUTMR have been used in the course of trade of more than mere local significance and only for the following services:

Retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags, the bringing together for the benefit of others of the aforesaid goods enabling customers to conveniently view and purchase such goods; the provision of retail services via a mail order catalogue for the aforesaid goods; the provision of on-line retail services from an Internet website for the aforesaid goods.

The right under the applicable law

The opposition is based on two non-registered trade marks used in all Member States (one of the earlier rights excluding Hungary). The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off in the United Kingdom and the Republic of Ireland and to restrain use and registration of the opposed mark throughout the European Union as a consequence of unfair competition laws.

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

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right.

In the present case the opponent did not submit any evidence regarding the applicable laws in Estonia, Netherlands, Czech Republic, Denmark, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg. Therefore, the opposition is not well founded under Article 8(4) EUTMR as far as it is based on the non registered trade marks used in all these Member States. The examination proceeds based on the claim for passing off in the United Kingdom and Ireland.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods or services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods or services.

For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead to a misrepresentation whereby the public might believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

Compliance with the criteria of national law

The opponent must prove that it enjoys goodwill for the services claimed under its mark

The evidence examined above indicates that by the filing date of the contested trade mark part of the opponent’s services had been effectively present in the market for some time, generating transactions and sales. The Opposition Division finds that the evidence proves that the opponent enjoys goodwill for retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the bringing together for the benefit of others of the aforesaid goods enabling customers to conveniently view and purchase the aforesaid goods, the provision of retail services via a mail order catalogue for the aforesaid goods; the provision of on-line retail services from an Internet website for the aforesaid goods in the mind of the purchasing public for the sign ‘NET-A-PORTER’.

Misrepresentation

The contested sign must be likely to lead to a misrepresentation whereby the public might believe that services to be offered by the applicant are the opponent’s services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s services in the belief that they are the opponent’s.

In the present opposition proceedings, determining whether a misrepresentation is likely to occur is a matter of fact and, in the context of opposition proceedings, depends on evaluating:

(i) the nature and extent of the goodwill relied upon;

(ii) the closeness or otherwise of the respective fields of activity in which the applicant enjoys goodwill and the contested services;

(iii) the similarity of the marks;

(iv) the manner in which the particular trade(s) are carried out.

i. The services

Whilst a ‘common field of activity’ is not a requirement in passing off, clearly the similarity of the trade(s) in question is a factor which must be considered (Annabel’s (Berkeley Square) Ltd. v Schock [1972] RPC 838) when determining whether a misrepresentation might occur.

The opponent enjoys goodwill in relation to:

Retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, leather goods, handbags and all manner of bags; the bringing together for the benefit of others of the aforesaid goods enabling customers to conveniently view and purchase the aforesaid goods, the provision of retail services via a mail order catalogue for the aforesaid goods; the provision of on-line retail services from an Internet website for the aforesaid goods.

The opposition is directed against the following goods and services of the contested trade mark:

Class 9: Credit cards; prepaid cards, magnetic, charge, discount and encoded cards; apparatus for electronic payment processing.

The services for which the opponent enjoys goodwill are broadly speaking, retail of articles of fashion and fashion accessories, in particular and mainly online.

The Opposition Division considers that the contested goods and services are very different to those for which the earlier mark enjoys goodwill. These differences have been analysed in the previous section of the decision. The same findings are also applicable to this analysis.

The expertise and skills involved in offering the remaining contested services relate to completely different competences and the consumer is unlikely to perceive any link between them or to associate one with the other or to conceive of the services as coming from similar undertakings.

ii. The signs

The signs have been already compared above. The same findings in relation to the English-speaking part of the public apply to the current analysis, namely that they are similar only to a low degree.

iii. Conclusion

The contested goods and services are fundamentally different to those for which the earlier mark enjoys goodwill. The consumer is unlikely to perceive any link between them or to associate one with the other or to conceive of the services as coming from similar undertakings. Therefore, the Opposition Division concludes that the offering of goods and services in Classes 9 and 39 under the contested sign will not constitute or result in any misrepresentation that might lead consumers into believing that the goods and services offered by the applicant are the services of the opponent or to the contested sign trading off the goodwill of the earlier mark in any other way. As a consequence, the Opposition Division finds that the opposition is not well founded under Article 8(4) CTMR insofar as based on the law of passing-off in relation to these goods and services.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

VI COSTS

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

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

The Opposition Division

Liliya YORDANOVA

Plamen IVANOV

José Antonio
GARRIDO OTAOLA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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