OPPOSITION No B 2 264 599

Tripp Limited, Floors 1 & 2, 2-5 St. John’s Square, London EC1M 4DE, United Kingdom (opponent), represented by Jensen & Son, 366-368 Old Street, London EC1V 9LT, United Kingdom (professional representative)

a g a i n s t

Angela Spieth and Michael Oehler, Puschkinallee 38, 12435 Berlin, Germany (holders), represented by Adares Patent- und Rechtsanwälte Reininger & Partner GmbB, Tauentzienstraße 7 b/c, 10789 Berlin, Germany (professional representative).

On 17/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 264 599 is upheld for all the contested goods, namely:

Class 18: Leather and imitations of leather and goods made of these materials and not included in other classes; umbrellas, parasols and walking sticks; bags included in this class; trunks and travelling bags; wallets, purses, travelling manicure bags, rucksacks.

2.        International registration No 794 823 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

3.        The holders bear the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 794 823 for the figurative mark , namely against all the goods in Class 18. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 561 215 for the word mark ‘TRIPP’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE PROOF OF USE

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

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

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

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

On 06/12/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/02/2017 to submit evidence of use of the three earlier trade marks.

In the present case, the relevant date (first republication of the contested international registration + six months) is 03/11/2013.

However, earlier United Kingdom trade mark No 2 561 215 was registered on 25/03/2011 and therefore, at the beginning of the opposition period (03/11/2013), it had not been registered for at least five years. Consequently, the request for proof of use is inadmissible as regards this earlier mark.

For the sake of completeness, it should also be noted that the request for proof of use was filed in due time and is admissible as regards the remaining earlier trade marks. However, for reasons of procedural economy, the Opposition Division will first analyse the likelihood of confusion and will analyse the proof of use submitted by the opponent only if it is deemed necessary.

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 United Kingdom trade mark registration No 2 561 215.

1. The goods

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

Class 18: Leather and imitation of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; luggage, bags; suitcases, cabin bags; garment carriers; washbags; trolley bags; briefcases; pilot bags, attache cases; handbags, vanity bags; folio cases; duffel bags; back-packs; laptop computer bags; wheeled tote bags; shopper bags; garment carriers and bags; straps, money belts, bumbags, pouches.

The contested goods are the following:

Class 18: Leather and imitations of leather and goods made of these materials and not included in other classes; umbrellas, parasols and walking sticks; bags included in this class; trunks and travelling bags; wallets, purses, travelling manicure bags, rucksacks.

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.

Leather and imitations of leather and goods made of these materials and not included in other classes; umbrellas, parasols and walking sticks; bags included in this class; trunks and travelling bags; rucksacks are identically contained in both lists of goods (including synonyms and, in some cases, slightly different wording).

The contested travelling manicure bags are included in the broad category of the opponent’s bags. Therefore, they are identical.

The contested wallets, purses are meant to carry money or credit cards and are, therefore, highly similar to the opponent’s money belts, as they can coincide in their producers, end users and distribution channels. Moreover, they have the same nature and purpose and may be in competition with each other.

For the sake of completeness, it should be mentioned that the contested travel items, namely bags included in this class; trunks and travelling bags; travelling manicure bags, rucksacks, are at least similar to an average degree to the opponent’s suitcases, as they have the same nature and purpose (travel items to carry clothing or other personal articles), can be produced by the same companies, are distributed through the same trade channels and target the same end users. Furthermore, some of the contested goods may be in competition with the abovementioned opponent’s goods (e.g. travelling bags and rucksacks).

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is average.

3. The signs

TRIPP
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 only element of the earlier mark, namely the word ‘TRIPP’, has no meaning as such for the relevant public. However, it will be perceived as an allusive misspelling of the word ‘trip’, that is, ‘a journey or excursion, especially for pleasure’ (information extracted from Oxford Dictionaries on 04/08/2017 at www.oxforddictionaries.com). Therefore, it is weak in relation to some of the relevant goods, namely travel items and, in particular, trunks and travelling bags; bags; suitcases; backpacks. The holders claim that the earlier mark lacks any distinctive character because it describes the characteristics of the goods. However, taking into account that the word ‘TRIPP’ of which the earlier mark is composed does not exist as such in English but is a misspelling of the word ‘trip’ (even if it is phonetically identical to it, as indicated by the holders), the Opposition Division is of the opinion that this verbal element is not totally non-distinctive. This word has an average degree of distinctiveness in relation to the remaining relevant goods, which are not related to travelling.

The element ‘trippen’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive in the context of the relevant goods.

Furthermore, since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

It must also be emphasised that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their first five letters, ‘tripp’, which are written in a slightly stylised typeface in the contested sign, while, in the earlier mark, they constitute the only element, which is weak for at least some of the relevant goods. However, they differ in the two additional, final, letters ‘en’ of the contested sign, as well as in the stylised depiction of this sign, which performs only a decorative function within the sign and will not draw the consumer’s attention away from the word it embellishes.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘/tripp/’, present identically in both signs. These sounds are placed at the beginning of the contested mark and form the only element of the earlier mark, which is weak for at least some of the relevant goods. The pronunciation differs in the sound of the final letters ‘/en/’ of the contested mark, which have no counterparts in the earlier sign.

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

Conceptually, although the public in the relevant territory will perceive the weak meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade mark has a reputation in the United Kingdom in connection with luggage, travel goods and accessories. The holders argue that the reputation was not claimed before the opposition period expired. However, the Opposition Division points out that, as it was claimed during the substantiation period, it can, nevertheless, be taken into account in the framework of enhanced distinctiveness.

Therefore, 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).

The opponent submitted the following evidence:

• ANNEX 2: a printout from the opponent’s website, containing pictures of suitcases on sale. The document is in English and has a copyright date of 2012.

• ANNEX 3: printouts from the retailer ‘Debenhams’ online shop (with a copyright date of 2001-2012), offering, inter alia, luggage under the mark ‘TRIPP’, in particular bags, suitcases and backpacks, together with a printout of an article (by Condé Nast UK 2012) referring to the ‘Innovation & Designs Awards 2011: the winners. Style on the move. Winner: Jasper Conran at Tripp’, regarding a luggage range designed by fashion designer Jasper Conran for Tripp (the printout shows a picture of a travelling bag).

• ANNEX 4: advertisements (in magazines such as InStyle, Marie Claire, etc.) for bags and luggage under the title ‘JASPER CONRAN AT TRIPP’ (mentioning that they are available in Tripp at Debenhams and online at www.tripp.co.uk). Some of these pages are dated between 2006 and 2008 and some are undated.

• ANNEX 5: an extract from a report entitled ‘Luggage – UK – November 2006’ issued by Mintel Group Ltd., where it is stated that ‘Tripp is the Debenhams brand, sold throughout its stores as well as trading through its own website. Strong growth for Debenhams has been one factor helping boost Tripp’s sales to make it the most dynamic brand in the UK market over the review’.

• ANNEXES 6-8: front pages of three reports entitled ‘Leather Goods in UK (2010-2012) – Market Sizes’ issued by Mintel’s Global Market Navigator, in which Tripp is listed among other companies, such as LVMH (Dior), Samsonite, Burberry UK, etc.

• ANNEX 9: a picture of the ‘Condé Nast Traveller’ award winner on the Jasper Conran website. None of the opponent’s signs appears on this page; only the name of its designer, ‘Jasper Conran’, and a luggage collection named ‘Metropolitan’ showing the same bag as in ANNEX 3 are shown.

• ANNEX 10: two pages from the online analysis tool ‘GfK Quickview – Retail Audit Luggage GB’ provided by GfK Marketing Services, entitled ‘Running-Report Bags and Cases, Great Britain’, dated 07/11/2011, presenting market shares for several brands from October 2009 to September 2011 and, in particular, showing a market share for the mark ‘TRIPP’ of 23.4% from October 2009 to September 2010 and of 24.9% from October 2010 to September 2011 under the category ‘suitcases’.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market for some of the goods for which the reputation has been claimed, namely for suitcases in Class 18.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and that it enjoys a consolidated position among the leading luggage brands, as has been attested by independent sources. The extract from the ‘GfK Quickview – Retail Audit Luggage GB’ tool shows a market share for the mark ‘TRIPP’ of 23.4% from October 2009 to September 2010 and of 24.9% from October 2010 to September 2011 for suitcases (compared, for example, with the share for ‘Samsonite’ of 14.7% from October 2009 to September 2010 and of 15.7% from October 2010 to September 2011). This represents a total sale of 18 109 among all brands of suitcases (77 181 in total) from October 2009 to September 2010 and a total sale of 21 992 among all brands of suitcases (88 275 in total) from October 2010 to September 2011 (compared with ‘Samsonite’ total sales being 11 358 and 13 788, respectively).

It should be also pointed out that, even though this report predates by about a year and a half the relevant date of the subsequent designation of the EU in the contested international registration, namely 20/02/2013, it cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on how close the period covered is to the relevant date (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31; 17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T-262/04, Briquet à pierre, EU:T:2005:463, § 82). In this regard, the relevance of the evidence should be carefully assessed by reference to the kind of goods concerned because changes in consumer habits and perceptions may take some time, usually depending on the particular market involved. In the present case, the independent retail audits conducted during several successive years (the final one containing data up to September 2011), together with other substantial evidence, unequivocally demonstrate that the mark enjoys a high degree of recognition among the relevant public and has acquired a strong reputation. The Opposition Division is of the opinion that this degree of recognition acquired through long-standing and intensive use, as shown by the evidence, is not likely to be diluted fast, since it would presuppose a dramatic change of market conditions over a short time.

The abovementioned figures prove a significant market share and indicate a substantial turnover in relation to the sale of suitcases in the United Kingdom. They are supported by the extract from the Mintel market report of 2006, referring to ‘TRIPP’ as one of the most dynamic brands in the UK market for luggage, and the extracts of Mintel’s Global Market Navigator reports entitled ‘Leather Goods in UK’ for 2010, 2011 and 2012, which list the mark among well-known companies for luggage, such as LVHM, Samsonite and Burberry UK. However, the informative value of these extracts is limited, since the report of 2006 substantially predates the abovementioned relevant date and only single pages of the reports from 2010, 2011 and 2012 were submitted. The market of ‘Luggage & Leather Goods in UK’ is described as covering bags, travel items (e.g. suitcases and rucksacks), briefcases, women’s handbags, small leather goods (e.g. purses, wallets and document holders) and clothes accessories (e.g. belts and gloves). These goods are only partly covered by the earlier mark and the reports do not provide sufficient information with regard to the broad range of goods for which the earlier mark is registered in Class 18.

It follows that sufficient evidence has been submitted to prove the enhanced degree of distinctiveness of the earlier UK mark only in relation to suitcases. The evidence does not demonstrate that the earlier trade mark has acquired an enhanced degree of distinctiveness in relation to any other goods in Class 18 for which reputation has been claimed. The extracts from the opponent’s online shop, the printouts from its distributor’s website and the advertisements show not only suitcases but also bags and handbags. However, in the absence of any supporting documents regarding the turnover achieved, the evidence is insufficient to prove the intensity of use in relation to goods other than suitcases.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods are identical or similar to various degrees to the goods on which the opposition is based. They target the public at large and business customers, both with an average degree of attention. The earlier mark has an average degree of distinctiveness in relation to some of the relevant goods, while it has a lower than average degree of distinctiveness for travel items, except for suitcases, in relation to which it has an enhanced degree of distinctiveness.

It has also been concluded that the signs are visually and aurally similar to an average degree and are not conceptually similar. The signs coincide in five out of the seven letters of the contested mark and their differences are confined to the final two letters of the contested mark and to its stylised depiction, which has only a decorative function in the contested sign, as explained in detail above.

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

Furthermore, it should also be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. 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 which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods (similar to various degrees). Therefore, the relevant public may believe that the goods come from the same undertaking or, at least, economically-linked undertakings.

In their observations, the holders argue that their international registration for the word ‘trippen’ (the same one as in the present case) was originally registered on 12/02/2002 designating various Member States, seeming to adduce that it coexists with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion that the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark has duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which the applicant relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard, it should be noted that formal coexistence of certain marks in national or Union registers is not per se particularly relevant. It needs also be proved that they coexist on the market, which might actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is, in principle, restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks on the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might work against an assumption that there is a likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, for example, different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the holders must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 561 215. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier right No 2 561 215 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

Since the holders are the losing party, they must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Martin MITURA

Eva Inés PÉREZ SANTONJA

Vít MAHELKA

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

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