BALMORAL | Decision 2595323 - Hunter Boot Limited v. REFASHION LIMITED

Date Published: Oct 1, 2017

OPPOSITION No B 2 595 323

Hunter Boot Limited, 36 Melville Street, Edinburgh, Scotland EH3 7HA, United Kingdom (opponent), represented by Marks & Clerk Llp, Atholl Exchange 6 Canning Street, Edinburgh, Scotland EH3 8EG, United Kingdom (professional representative)

a g a i n s t

Refashion Limited, Ajeltake Road, Ajeltake Island, Majuro 96960, Marshall Islands (applicant), represented by Modiano Josif Pisanty & Staub Ltd, Thierschstr. 11, 80538 München, Germany (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 595 323 is upheld for all the contested goods, namely:

Class 18: Suitcases; traveling bags [leatherware]; casual bags; boston bags; handbags; shoulder bags; casual bags; evening handbags; beach bags; sport bags; travel baggage; small bags for men; leather purses; clutch bags; handbags; satchels; school book bags; portfolio cases [briefcases]; duffel bags; travel garment covers; bumbags; briefcases and attache cases; leather pouches; haversacks; shopping bags; daypacks; backpacks; trunks and travelling bags.

Class 25: Insoles [for shoes and boots]; footwear soles; fittings of metal for footwear.

2.        European Union trade mark application No 14 350 748 is rejected for all the above goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 350 748, namely against some of the goods in Class 18 and all goods in Class 25. The opposition is based on European Union trade mark registration No 11 534 245. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(a) and (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.

Furthermore, although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion.

1. The goods

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

Class 18: Bags and pouches (none being knitted) adapted to carry boots and shoes.

Class 25: Footwear; slippers; liners for boots and shoes; socks for use with wellington boots and waterproof boots; socks; sports footwear; after-sports footwear; but not including knitwear or any of the aforesaid goods made from knitted materials; boots; wellington boots; waterproof boots; waterproof footwear; galoshes; waterproof clogs; shoes; shoes of rubber, leather or other materials; sandals; flip-flops; welts for boots and shoes; non-slipping devices for boots; inner soles; heels and soles for footwear; insoles for boots and shoes.

Following the partial refusal of the contested application in parallel opposition No B 2 594 177 of 31/08/2016, the remaining contested goods are the following:

Class 18: Suitcases; traveling bags [leatherware]; casual bags; boston bags; handbags; shoulder bags; casual bags; evening handbags; beach bags; sport bags; travel baggage; small bags for men; leather purses; clutch bags; handbags; satchels; school book bags; portfolio cases [briefcases]; duffel bags; travel garment covers; bumbags; briefcases and attache cases; leather pouches; haversacks; shopping bags; daypacks; backpacks; trunks and travelling bags.

Class 25: Insoles [for shoes and boots]; footwear soles; fittings of metal for footwear.

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.

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Contested goods in Class 18

The contested leather pouches overlap with the opponent’s pouches (none being knitted) adapted to carry boots and shoes. They are identical.

The contested casual bags; boston bags; handbags; shoulder bags; casual bags; evening handbags; beach bags; sport bags; small bags for men; clutch bags; handbags; satchels; school book bags; duffel bags; bumbags; haversacks; shopping bags; daypacks; backpacks are all different types of bags. They coincide in nature with the opponent’s bags and pouches (none being knitted) adapted to carry boots and shoes and in their purpose since all serve for carrying things (although these things may vary). These goods may have the same commercial origin and are offered to sale in the same stores. Therefore, they are similar.

The contested suitcases; traveling bags [leatherware]; travel baggage; travel garment covers; trunks and travelling bags are similar to the opponent’s bags and pouches (none being knitted) adapted to carry boots and shoes. These goods are often used in combination and may be in competition, since consumers may choose between one or the other to carry their footwear when travelling. They are often manufactured by the same companies and sold through the same distribution channels.

The contested leather purses; portfolio cases [briefcases]; briefcases and attache cases are similar to the opponent’s footwear. These goods may coincide in producers and target the same users. They also coincide in the distribution channels.

Contested goods in Class 25

Insoles; footwear soles are found to be similar to the opponent’s footwear as they can coincide in producers, end users and distribution channels. Furthermore they are complementary.

The contested fittings of metal for footwear are parts for footwear as the opponent’s heels and soles for footwear are. These goods are often manufactured by the same companies and sold through the same distribution channels. They all target undertakings that manufacture the end product and are, therefore, similar.

2. Relevant public — degree of attention

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

In the present case, the goods found to be similar are directed at the public at large and also part of the goods, such as parts for footwear, at the professional public in the footwear industry. The degree of attention will be average.

3. The signs

BALMORAL	BALMORAL
Earlier trade mark	Contested sign

The signs are identical.

4. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, namely leather pouches are identical to the opponent’s goods. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, the remaining contested goods in Class 18 (suitcases; traveling bags [leatherware]; casual bags; boston bags; handbags; shoulder bags; casual bags; evening handbags; beach bags; sport bags; travel baggage; small bags for men; leather purses; clutch bags; handbags; satchels; school book bags; portfolio cases [briefcases]; duffel bags; travel garment covers; bumbags; briefcases and attache cases; haversacks; shopping bags; daypacks; backpacks; trunks and travelling bags) and Class 25 (insoles [for shoes and boots]; footwear soles; fittings of metal for footwear) are similar to the opponent’s goods. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

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 European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

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

Frédérique SULPICE

Begoña URIARTE VALIENTE

Pedro JURADO MONTEJANO

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.