AMERICAN STREET PREMIUM | Decision 2752965

Date Published: Sep 22, 2017

OPPOSITION No B 2 752 965

Retail Royalty Company, 101 Convention Center Drive Suite 850, Las Vegas, Nevada 89109, United States of America (opponent), represented by D Young & CO LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative)

a g a i n s t

Adlon Eurobusiness S.L., Ronda Sanlucar La Mayor, 42, 41110 Sevilla/Bollullos Mitacion, Spain, (applicant), represented by Gt. De Propiedad Industrial, S.L., c/Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 965 is upheld for all the contested goods and services

2.        European Union trade mark application No 15 387 021 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 387 021. The opposition is based on, inter alia, European trade mark registration No 5 066 113 and for this earlier right on Article 8(1)(b) and 8(5) EUTMR.

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

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

The 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 trade mark registration No 5 066 113.

1. The goods and services

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

Class 3: After-shave lotions, non-medicated lip balm, bath oil, bath powder, non-medicated bath salts, bubble bath, beauty masks, body cream, body oil, body powder, cologne, perfume, toilet water, cosmetic pencils, hand cream, eye cream, night cream, shaving cream, skin cleansing cream, skin cream, deodorant soap, personal deodorants, antiperspirants, and combination deodorants/antiperspirants, emery boards, essential oils for personal use, eye makeup, eye makeup remover, eye pencils, eye shadow, eyebrow pencils, eyeliners, face powder, facial scrubs, foundation makeup, bath gel, shaving gel, shower gel, lip gloss, lipstick, hair conditioners, hair gel, hair rinses, hair spray, skin lotion, facial lotion, body lotion, makeup, facial makeup, mascara, massage oil, skin moisturizer, nail enamel, nail polish, rouge, sachets, hair shampoo, shaving balm, shaving lotion, skin cleansing lotion, skin soap, skin toners, liquid soaps for hand, face, and body, and cosmetics, including compacts.

Class 18: Athletic bags, all-purpose athletic bags, all-purpose sports bags, backpacks, barrel bags, beach bags, book bags, clutch bags, duffel bags, gym bags, leather shopping bags, shoulder bags, tote bags, travel bags, billfolds, briefcases, business card cases, calling card cases, credit card cases, attaché cases, document cases, key cases, overnight cases, passport cases, passport wallets, passport holders, credit card holders, cosmetic cases sold empty, toiletry cases sold empty, vanity cases sold empty, change purses, clutch purses, coin purses, drawstring pouches, waist packs, handbags, leather key fobs, knapsacks, luggage, luggage tags, pocketbooks, briefcase-type portfolios, purses, rucksacks, satchels, suitcases, and wallets.

Class 25: Clothing and accessories, namely, blazers, vests, sweaters, turtleneck sweaters, sweater coats, skirts, skorts (combination skirt and shorts), pants, jeans, shorts, shirts, t-shirts, sport shirts, pull-overs, overalls, blouses, shortalls, polo shirts, rugby shirts, halters, halter tops, sweatshirts, sweatpants, and fleecewear; swimwear; beach cover-ups; sleepwear; pajamas; robes; underwear, namely bras, panties, boxer shorts, shell bra tanks, and undershirts; outerwear, namely, jackets, vests, parkas, coats, pea coats, ski pants and ski jackets, 3-in-1 system coats, snowboarding pants and jackets, anoraks, gloves, ear muffs, scarves and mittens; ties; belts; footwear, namely, socks, shoes, slippers, leather boots, rubber boots, insoles, sandals, flipflops, sneakers, clogs and slides, and hosiery; athletic footwear, namely, athletic shoes, trail and hiking shoes and boots, canvas shoes, and rollerskates, headwear, namely, hats, hoods, caps, baseball caps, visors, sun visors, headbands, babushkas, head and wrist sweatbands, headscarves, berets.

Class 35: Retail store services, electronic retail commerce over the Internet/worldwide web, catalogue retail sales, mail order and phone order retail services, all for a wide range of fragrances, after-shave lotions, non-medicated lip balm, bath oil, bath powder, non-medicated bath salts, bubble bath, beauty masks, body cream, body oil, body powder, cologne, perfume, toilet water, cosmetic pencils, hand cream, eye cream, night cream, shaving cream, skin cleansing cream, skin cream, deodorant soap, personal deodorants, antiperspirants, and combination deodorants/antiperspirants, emery boards, essential oils for personal use, eye makeup, eye makeup remover, eye pencils, eye shadow, eyebrow pencils, eyeliners, face powder, facial scrubs, foundation makeup, bath gel, shaving gel, shower gel, lip gloss, lipstick, hair conditioners, hair gel, hair rinses, hair spray, skin lotion, facial lotion, body lotion, makeup, facial makeup, mascara, massage oil, skin moisturizer, nail enamel, nail polish, rouge, sachets, hair shampoo, shaving balm, shaving lotion, skin cleansing lotion, skin soap, skin toners, liquid soaps for hand, face, and body, and cosmetics, including compacts candles, sunglasses, jewellery and wristwatches, stationery, posters, pictorial, art and colour prints, calendars and travel diaries, pens, pencils, portfolios, notepads, greeting cards, and note cards, including wallets, handbags, purses, shoulder bags, and luggage, school bags, backpacks, daypacks, waist packs, duffel bags, general purpose sport bags, laundry bags, and portfolios, and umbrellas, and a wide range of wearing apparel and clothing accesories, including clothing, headwear and footwear, athletic bags, all-purpose athletic bags, all-purpose sports bags, barrel bags, beach bags, book bags, clutch bags, gym bags, leather shopping bags, tote bags, travel bags, billfolds, briefcases, business card cases, calling card cases, credit card cases, attaché cases, document cases, key cases, overnight cases, passport cases, passport wallets, passport holders, credit card holders, cosmetic cases sold empty, toiletry cases sold empty, vanity cases sold empty, change purses, coin purses, drawstring pouches, leather key fobs, knapsacks, luggage, luggage tags, pocketbooks, briefcase-type portfolios, purses, rucksacks, satchels, suitcases, and wallets.

The contested goods and services are the following:

Class 34: Tobacco.

Class 35: Commercial trading and consumer information services.

        

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 34

The contested good is tobacco. It is a very specific good. The nature, purpose and method of use of the contested good are clearly different from those of the opponent’s goods and services in classes 3, 18, 25 and 35. They are usually produced by different companies and sold through different distribution channels. They do not target the same relevant public and are not in competition or complementary. Consequently, they are dissimilar.

Contested services in Class 35

The contested services are commercial trading and consumer information services which overlap with the opponent’s retail services. Commercial trading can involve retail trading or whole sale trading. Consumer information services are services involving the final user. Information services are in principle always similar, or even identical, to the services to which they relate.

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale).

Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale  and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (judgment of 07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

Therefore the opponent’s retail store services, electronic retail commerce over the Internet/worldwide web, catalogue retail sales, mail order and phone order retail services, all for a wide range of goods are deemed identical to the contested services.

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 services found to be identical are directed at the public at large. Commercial trading can also be directed at professionals. The degree of attention may vary from average to high as professional services generally involve high amounts of money.

3. The signs

Earlier trade mark	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 figurative element of the earlier mark represents an eagle with its legs and claws visible, about to land, facing left, depicted in black. It is distinctive for the goods.

The eagle represented in the contested sign is in gold, also facing left, with its legs and claws visible, about to land. It is also distinctive. However, the words ‘American’ (written in inclined writing style and smaller typeface than the verbal elements ‘STREET PREMIUM’ below) would be understood in the whole European Union as alluding to the origin of the tobacco brand, therefore weak. The eagle and the word ‘American’ are placed in a red rectangle. Since the verbal element ‘PREMIUM’ would  be understood in the whole European Union as indicating a superior quality, and therefore also considered non-distinctive, the word ‘STREET’ is the most distinctive verbal element in the sign. There are no obvious dominant elements in the mark taken as a whole and the different elements are co-dominant.  

Visually, the earlier trade mark is almost identically reproduced at the top of the contested sign. The differences in details would go unnoticed and the golden colour is not striking, compared to the fact that the earlier trade mark is protected in black and white (with no colour claims). The additional co-dominant element of the contested sign, as described above, would not go unnoticed, in particular the word elements, even if some are more distinctive than others. As a whole, because of the layout of the contested sign and, the almost identity between the eagles represented and the fact that the earlier sign is exclusively composed of a figurative element, it is considered that the signs are visually similar to a degree higher than average.

Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, both signs represent an eagle and, but since the contested sign also has added verbal elements, they are conceptually similarto an average degree.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods 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.

5. Global assessment, other arguments and conclusion

The goods are dissimilar and the services identical. The sign almost identically coincide in the representation of the silhouette of an eagle which is distinctive in both signs and has an independent role.

As the services are identical and in spite of the differences in the word and figurative characteristics of the contested sign, there is a likelihood of confusion because the visual coincidences of the eagles are overwhelming.

Account is 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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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

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.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 5 066 113. It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

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

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, 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 mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• European trade mark registration No 11 553 203 for the figurative mark in Classes 3: fragrance; toiletries namely body wash and deodorants, Class 18: athletic bags, all purpose athletic bags, duffel bags, tote bags, all-purpose carrying bags, drawstring pouches, Class 21: water bottles sold empty, Class 24: towels, Class 25: clothing including tops, bottoms, socks, gloves, scarves, legwarmers, dresses, skirts, outwear, bras and underwear, footwear and headwear, Class 26: shoe laces; hair accessories, namely hair bands, barrettes and hair ties and Class 27: yoga mats.
• Croatian trade mark registration No Z 20 100 008 for the figurative mark  in Classes 3, 14 (jewelry and watches), 18, 25 and 35.
• Hungarian trade mark registration No 202 744 for the figurative mark in Classes 3, 18 and 25.
• Danish trade mark registration NoVR 2010 02216 for the figurative mark in Classes 18, 25 and 35.

The other earlier rights invoked by the opponent cover goods such as ‘jewellery and watches’ or ‘towels’ which are clearly different to those applied for in the contested trade mark because the nature, purpose and method of use of the contested good are clearly different from those of the opponent’s goods and services. They are usually produced by different companies and sold through different distribution channels. They do not target the same relevant public and are not in competition or complementary. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

As there is partial likelihood of confusion, the opposition must go on analysing the conditions under Article 8(5) EUTMR are met for the earlier trade marks for the goods found dissimilar, namely tobacco.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 5 066 113, for which the opponent claimed repute in the EU for all the above mentioned good and services in classes 3, 18, 25 and 35.

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 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.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

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

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

In the present case the contested trade mark was filed on 29/04/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely the goods and services listed above in classes 3, 18, 25 (Clothing and accessories, namely, blazers, vests, sweaters, turtleneck sweaters, sweater coats, skirts, skorts (combination skirt and shorts), pants, jeans, shorts, shirts, t-shirts, sport shirts, pull-overs, overalls, blouses, shortalls, polo shirts, rugby shirts, halters, halter tops, sweatshirts, sweatpants, and fleecewear; swimwear; beach cover-ups; sleepwear; pajamas; robes; underwear, namely bras, panties, boxer shorts, shell bra tanks, and undershirts; outerwear, namely, jackets, vests, parkas, coats, pea coats, ski pants and ski jackets, 3-in-1 system coats, snowboarding pants and jackets, anoraks, gloves, ear muffs, scarves and mittens; ties; belts; footwear, namely, socks, shoes, slippers, leather boots, rubber boots, insoles, sandals, flipflops, sneakers, clogs and slides, and hosiery; athletic footwear, namely, athletic shoes, trail and hiking shoes and boots, canvas shoes, and rollerskates, headwear, namely, hats, hoods, caps, baseball caps, visors, sun visors, headbands, babushkas, head and wrist sweatbands, headscarves, berets) and 35.        

In class 25, the general category ‘clothing and accessories’, ‘footwear’ and ‘headgear’ are restricted by the use of the preposition ‘namely’ used to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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

On 27/02/2017, the opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence consists, in particular, of the following documents:

Witness Statement of Rebecca Gibbs, the Deputy General Counsel of American Eagle Outfitters, Inc. (“AEO”), a corporation organised under the laws of the United States and the ultimate parent company of the Opponent, dated 27/02/2017. It  states that ‘the Opponent offers high-quality, on-trend clothing (…) at affordable prices under various trade marks, one of the most important being the mark shown below (“the Eagle Mark”): ; The Opponent has achieved significant commercial success in the UK and throughout the EU after starting to sell its products there in 2004 via its website www.ae.com and in 2014 via its UK stores’ and is followed by 42 exhibits among which:

Exhibit RG4: Web prints showing that the websites of the applicant www.aeo.com/eu and www.aeo.com/uk are available in EUR and GBP.

Exhibit RG5: Printouts from the Wayback Machine web archive (www.web.archive.org) (“the Wayback Machine”), dated between 2011 – 2016, showing the list of countries to which products offered via the www.aeo.com website can be shipped. The list of countries includes the UK and Greece (where the Opponent and its licensed partner operate physical stores), as well as Austria, Belgium, Bulgaria, Croatia, Czech Republic, Denmark, Finland, France, Germany, Hungary, Ireland, Italy, Luxembourg, the Netherlands, Poland, Portugal, Romania, Slovenia, Spain, Sweden.

Exhibit RG6: Printouts from the Wayback Machine which show use of the Eagle Mark on products available via www.aeo.com between 2011 and April 2016. All such products have been sold directly (and offered for sale) to consumers in the UK and throughout the EU (see further below for sales figures).

Exhibit RG7: Images of products bearing the Eagle Mark where the image of the eagle is dominant.

Exhibit RG8:  Number of internet sales of these items to customers in the EU from 2006 to 2011 amount to more than EUR 8.8 million. All such purchases were made by EU consumers online without there being a physical store presence in any of the EU member states.

Exhibit RG9: The UK subsidiary’s turnover from February 2014 to January 2015 was over GBP 2.7million, and rose to nearly GBP 9.7million the following year. This 25.9% increase in turnover directly coincides with the opening of the UK stores.

Exhibits RG11 and RG38: Examples of articles from the UK press which show the anticipation and buzz around the launch of American Eagle Outfitters (AEO) stores in the UK, together with independent corroboration of circulation figures/website viewer.

Exhibit RG16:  Examples of a number of other clothing products that have been advertised and sold by the Opponent throughout the UK and EU, on which the Eagle Mark can be clearly seen.

Exhibit RG22 : Article taken from the independent third party website FashionUnited (http://fashionunited.uk) which states that the EU fashion industry was valued at GBP £295.6 billion in 2014. As noted in the article, the clothing industry in the EU is dominated by a small number of large multinational conglomerates e.g. H&M, Inditex (which owns brands such as Zara and Pull & Bear) and Louis Vuitton Moët Hennessy (a French luxury conglomerate). As evidenced by the BrandZ 2007 report, and corroborated by the various UK/EU articles.

Exhibits RG40 and RG41: The Opponent’s brand American Eagle Outfitters regularly features alongside other reputable brands, such as H&M, Zara, Levis, Topshop etc.

Exhibit RG24: Examples of mail shots from 2012 which feature the Eagle Mark and were sent by email to all UK and EU consumers on the Opponent’s mailing list. These emails and advertisements show use of the Eagle Mark in relation to the advertising of clothing, including t-shirts, shorts, tops and jeans.  Between November 2014 and October 2015 more than 18,550 consumers within the UK alone signed up to receive such mail shots. There are many more recipients in other EU countries. In order to increase awareness of the Eagle Mark, the Opponent has used a variety of different marketing materials throughout the UK and EU.

Exhibit RG25:  Examples of press materials, in the form of ‘look books’ showcasing key on trend items, from between 2012 and 2014. The press materials are available on the AEO Websites and accessible to consumers across the UK and EU to browse

products featuring the Eagle Mark . The Eagle Mark can be clearly seen used in relation to a wide variety of clothing products and accessories, and the sale of such products.

Exhibit RG25: Examples of billboard campaigns used in the UK’s Bluewater shopping centre to advertise the AEO store there. The Eagle Mark features prominently in the bottom right hand corner of each advert, and can also be seen on the underwear in the last advert.

Exhibit RG26 : Post from the UK website Text Marketer (www.textmarketer.co.uk), dated 12 January 2016, which lists the Opponent’s mobile marketing campaign as the top marketing campaign from 2015. The post notes that the Opponent has “a big online presence but they wanted something to reward in store shoppers”. The campaign referenced in the article offered in-store shoppers a discount and entry into a free competition prize draw if they texted a number written on the walls of the changing rooms. The post goes on to comment: “It was a great way to engage customers with their brand, get them through the door, reward them and collect your customer’s data – top marks all round”.

Exhibit RG26: The Eagle Mark features prominently throughout the Opponent’s stores, so in-store shoppers would encounter the Eagle Mark on a number of occasions, through various means, during their visit (for example, see the article from RetailWeek, ‘Store Gallery: American Eagle Outfitters lands in the UK’)

Exhibit RG27: Article from Wolf Brand Experience, a brand experience agency, that generated buzz and chatter online and helped drive footfall to the Opponent’s stores around the time of the UK launch. The post includes a video which shows how the Eagle Mark has been used in multiple ways in the stores and around the shopping centres to promote the Opponent and its goods and services.

Exhibit RG27: Invoices and pricing details from Wolf Brand Experience relating to the advertising services rendered in connection with the promotion of the Opponent’s Westfield and Bluewater stores in the UK in 2015.

A wide range of products, including clothing, are sold under or by reference to the Eagle Mark where the eagle is clearly dominant and has an independent function (whether the mark appears on the goods themselves or their packaging/point of sale insignia).

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to clothing articles, whereas there is no or little reference to the remaining goods and services. This is clear, for example, from the affidavit, the sales figures, the press clips and the advertisements, where clothing are mentioned.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation at least in the United Kingdom for, at least, the following clothing articles for which the opponent has claimed reputation:

‘pants, jeans, shorts, shirts, t-shirts’.

3. The ‘link’ between the signs

The signs are similar since they share a very similar silhouette of an eagle. 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.

The mark in dispute are visually similar to a higher degree than average, considering that the eagles are represented in an almost identical manner and furthermore, that it is the only element of the earlier trade mark. They are also conceptually similar due to this common element. As argued by the opponent, the goods for which reputation was found, namely certain clothing articles and the contested goods (tobacco) are directed at the same public and clothing articles are often used by tobacco manufacturers for merchandising of their goods. The earlier trade mark is reputed at least in the United Kingdom and consumers would certainly call the opponent’s earlier trade mark to mind when presented with tobacco, because of the almost identity of the figurative elements and the fact that the goods are dissimilar but not to a degree that would make it impossible to consumers to associated both marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following: the opponent’s products are aimed at male and female consumers as can be seen from the marketing material in Exhibit 4, 6 and12, for example. The opponent’s advertising campaign feature young persons conveying an image of a positive lifestyle. The image of tobacco clearly conflicts with this image. Smoking tobacco is harmful to health and can cause lung diseases and young people are actively discouraged from smoking. It follows that the use of the opponent’s trade mark on the applicant’s goods would tarnish the reputation enjoyed on the eagle mark within the UK. Any such damage would result in a loss of confidence in its brand by consumers, as well as leading to decreased sales of its products.

In other words, the opponent claims that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against tobacco.

As seen above, the earlier trade mark was found to have a reputation at least for clothing.        

Detriment to repute (tarnishing)

Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 40, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 39).

In this respect the opponent argues the following: if a mark that is associated in the minds of the public with an image of health, dynamism and youth is used for tobacco products, the negative connotation conveyed by the latter would contrast strikingly with the image of the former. Tarnishment in this case occurs because there are some characteristic or qualities of the goods on which the contested mark is used that are potentially detrimental to the reputation of the earlier mark (judgment of 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 67).

In assessing whether the use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Office can only consider the goods and services as indicated in the specification of each trade mark. The opponent’s mark is reputed for at least some articles of clothing in the United Kingdom. The contested trade mark is filed for tobacco. Consequently, the detriment to repute is more than likely, as both types of goods is likely to be consumed by the same public and the image of tobacco is seen as negative for health. The negative image of one product would likely to  be detrimental to the repute of the other trade mark, being acknowledged that because of the similarities between the signs, there is a risk of association. As mentioned in R 297/2011-5 of 12/03/2012, ‘KAPPA’, paragraph 38, it is mentioned that smoking tobacco is universally considered to be an extremely unhealthy habit. For this reason, the use of the contested sign for tobacco is likely to prompt negative mental associations with the respondent’s earlier marks or associations conflicting with and detrimental to their image of a healthy lifestyle (para. 38).

On the basis of the above, the Opposition Division concludes that the contested trade mark will be detrimental to the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

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

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

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

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

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

The Opposition Division

Lena FRANKENBERG GLANTZ

Jessica LEWIS

Julie GOUTARD

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

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