CANADA GOOSE | Decision 2639501

Date Published: Sep 25, 2017

OPPOSITION No B 2 639 501

Canada Goose International AG, Baarerstrasse 133, 6300 Zug, Switzerland, (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Jose Luis Lopez Fernandez, San Jose Obrero 19, 45510 Fuensalida (Toledo), Spain (applicant), represented by Imp Marcas y Patentes S.L., Recaredo 6 Bajo Oficina C, 28002 Madrid, Spain (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 639 501 is partially upheld, namely for the following contested goods:

Class 9: Navigation, guidance, tracking, targeting and map making devices; information technology and audiovisual equipment; clothing especially made for laboratories; eyepieces (instruments containing -); interchangeable lenses; plastic lenses; optical lenses; ophthalmic lenses; lens; signalling apparatus; alarms and warning equipment; signalling apparatus and instruments; life-saving apparatus and instruments; divers’ life jackets; breathing apparatus for underwater swimming; divers’ boots; diving helmets; gloves for divers; divers’ masks; ear plugs for divers; diving suits; spectacles [optics]; spectacle holders; snow goggles; pince-nez cords; cyclists’ glasses; anti-glare glasses; pince-nez chains; fames for glasses; diving goggles; reading glasses; children’s eye glasses; spectacles cases; spectacle sheaths; pince-nez chains; sunglasses; swim goggles; sight glasses [optical]; cases adapted for glasses; spectacles for sports; spectacles [optics].

Class 14: Horological instruments; jewellery boxes and watch boxes; jewelry; boxes of precious metal; key rings [trinkets or fobs]; key rings [trinkets or fobs] of precious metal; chronometric apparatus and instruments; horological articles; clock cases; apparatus for timing sports events; cases for watches [presentation]; watchstraps; watch straps of plastic; non-leather watch straps; watchstraps made of leather; watch straps made of metal or leather or plastic; timing clocks; alarm clocks; cases for watches and clocks; buckles for watchstraps; horological instruments having quartz movements; jewellery, clocks and watches; timepieces; watches; pocket watches; quartz watches; women’s watches; mechanical watches; watchbands that communicate data to smartphones; divers’ watches; digital clocks; clocks and watches, electric; miniature clocks; watches that communicate data to smartphones; watches containing an electronic game function; timekeeping systems for sports.

Class 18: Saddlery, whips and animal apparel; umbrellas; walking sticks; boxes made of leather; coverings of skins [furs]; shoulder belts; laces (leather -); straps (leather -); straps for skates; shoulder straps; trunks and travelling bags; casual bags; all-purpose athletic bags; weekend bags; gym bags; tool bags of leather, empty; garment bags for travel made of leather; sling bags; carry-on bags; bags for climbers; beach bags; bags made of imitation leather; shoe bags for travel; flexible bags for garments; shoe bags; belt bags and hip bags; garment carriers; leather bags and wallets; handbags made of leather; handbags; canvas bags; evening handbags; travelling handbags; handbags made of imitations leather; multi-purpose purses; flight bags; handbags, purses and wallets; wallets including card holders; school book bags; document holders; bags [envelopes, pouches] of leather, for packaging; baggage and luggage; credit card holders made of leather; vanity cases, not fitted; tie cases; keycases; carrying cases for documents; luggage tags [leatherware]; key cases made of leather; driving licence cases; pullmans; portfolio cases [briefcases]; briefcases and attache cases; backpacks; rucksacks on castors; satchels; garment bags for travel; bumbags; duffel bags; travelling sets; straps of leather (saddlery); purses.

2. European Union trade mark application No 14 395 602 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 395 602. The opposition is based on (1) EUTM No 3 898 021, (2) EUTM No 10 494 979, (3) Swedish trade mark No 313 150 and (4) German trade mark No 39 725 550.

The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 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.

The signs

CANADA GOOSE

(1) EUTM No 3 898 021

Image representing the Mark

(2) EUTM No 10 494 979

Image representing the Mark

(3) Swedish trade mark No 313 150 and

(4) German trade mark No 39 725 550

CANADA GOOSE

Earlier trade marks

Contested sign

The relevant territory is the European Union, Sweden and Germany.

Earlier mark (1) and the contested mark are word marks consisting of the words ‘CANADA’ and ‘GOOSE’. Earlier mark (2) is a figurative mark consisting of a red circle with a double border, which creates a ring in which the words ‘CANADA GOOSE ARCTIC PROGRAM’ are depicted in red upper case letters, together with some red maple leaves; in the middle of this combination is a white map of Canada depicted on a blue background with radial red lines and a red focal point. Earlier marks (3) and (4) are figurative marks consisting of the words ‘Canada Goose’ depicted in slightly stylised title case letters above the figures of two geese.

Conceptually, the relevant public will associate the coinciding word ‘CANADA’ with a country in North America. The red maple leaves and the map of Canada in earlier mark (2) will be associated with the same concept by the relevant public. The English-speaking part of the public will associate the word ‘GOOSE’ with ‘a large bird that has a long neck and webbed feet’ (information extracted from Collins Dictionary on 10/07/2017 at https://www.collinsdictionary.com/dictionary/english/goose), and therefore this public will perceive all marks as a bird from Canada. In any case, all the relevant public will associate the figures in earlier marks (3) and (4) with geese. The additional words ‘ARCTIC PROGRAM’ of earlier mark (2) will be perceived, by the relevant public, as a programme from the Arctic zone.

Visually and aurally, earlier mark (1) and the contested mark are identical. Conceptually, they are also identical for the English-speaking part of the public, which will understand both words that the signs have in common, ‘CANADA’ and ‘GOOSE’, and similar for the rest of the public, which will understand only the word ‘Canada’. This conclusion also applies for the aural and conceptual comparisons with earlier marks (3) and (4).

Earlier marks (2), (3) and (4) are visually similar to the contested mark based on the coinciding words ‘CANADA GOOSE’. In the case of the earlier mark (2), the visual differences consist in the additional words ‘ARCTIC PROGRAM’, as well as in the figurative elements and the colours of the earlier mark. In the case of earlier marks (3) and (4), the visual differences consist in the figures reproducing two geese and the style and font of the letters of the earlier marks.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, earlier mark (2) is similar to the contested mark, as they coincide in the pronunciation of the words they have in common, ‘CANADA GOOSE’. They differ in the pronunciation of the additional words ‘ARCTIC PROGRAM’ of earlier mark (2), which have no counterparts in the contested mark.

Conceptually, earlier mark (2) is similar to the contested mark, as they have the same concept associated with the words ‘CANADA GOOSE’, or only ‘CANADA’ for part of the public.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are identical or similar.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union, Sweden and Germany.

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 22/07/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union, Sweden and Germany 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:

(1) EUTM No 3 898 021

Class 25: Clothing and outwear namely coats, jackets, pull-overs, coveralls, vests, shirts, pants and anoraks; gloves and mittens.

(2) EUTM No 10494979

Class 25: Clothing, footwear, headgear; Outerwear, coats, jackets, scarves, gloves and mittens.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel and tour services; arranging and operating adventure activities and excursions.

(3) Swedish trade mark No 313 150

Class 25: Clothing; footwear; headgear.

(4) German trade mark No 39 725 550

Class 20: Down-filled sleeping bags.

Class 25: Down-filled parkas, coats, jackets, sweaters, vests, sweaters, shirts, hats, caps, socks, anoraks.

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

The term ‘namely’, used in the opponent’s list of goods 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.

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 31/05/2017, 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:

Enclosure 1: documents containing the history of the Canada Goose brand, extracted from www.canada-goose.com and Wikipedia, dated 22/06/2015;

Enclosure 2: an article entitled ‘How Canada Goose went from small outerwear company to international luxury brand’, published on www.entrepreneur.com, dated 29/12/2014;

Enclosure 3: an article in the Canadian newspaper Financial Post (www.financialpost.com) entitled ‘Canada Goose’s made-in-Canada marketing strategy translates into success’, dated 18/05/2012;

Enclosure 4: an article in the Canadian newspaper Financial Post (www.financialpost.com) entitled ‘Canada Goose opens European headquarters in Sweden’, dated 03/06/2010;

Enclosure 5: extracts from the Canada Goose online shop presenting goods such as winter jackets and gloves marketed under the marks ‘Canada Goose’ and ;

Enclosure 6: an article from adweek.com entitled ‘Why so many people are suddenly wearing $600 Canada Goose coats – thanks Sundance, Kate Upton and Penguins’, dated 03/03/2015, mentioning the fact that Canada Goose products are worn by numerous celebrities worldwide;

Enclosure 7: an article entitled ‘Canada Goose: history of a Canadian fashion brand’, published on www.mason-studio.com, dated 10/10/2011, depicting goods such as winter jackets and hats marketed under the marks ‘Canada Goose’ and ;

Enclosure 8: an article entitled ‘The cult of Canada Goose’ published in www.thedailybeast.com, dated 23/12/2013, and an article from Boston University Today (www.bu.edu) entitled ‘What’s behind the success of Canada Goose?’, dated 18/02/2015, both reporting the great success of Canada Goose in recent years as an outerwear brand;

Enclosures 9-14: press clippings showing the press coverage of the ‘Canada Goose’ and marks in Germany for 2010-2014, presenting goods such as outerwear, gloves or hats marketed under these marks;

Enclosures 15-18: press clippings showing the press coverage of the ‘Canada Goose’ and marks in Denmark for 2010-2013, presenting goods such as outerwear, gloves or hats marketed under these marks;

Enclosure 19: press clippings showing the press coverage of the ‘Canada Goose’ and marks in Finland for 2010-2013, presenting goods such as outerwear, gloves or hats marketed under these marks;

Enclosures 20-23: press clippings showing the press coverage of the ‘Canada Goose’ and marks in France for 2010-2014, presenting goods such as outerwear, gloves or hats marketed under these marks;

Enclosures 24-27: press clippings showing the press coverage of the ‘Canada Goose’ and marks in Sweden for 2010-2013, presenting goods such as outerwear, gloves or hats marketed under these marks;

Enclosures 28-30: press clippings showing the press coverage of the ‘Canada Goose’ and marks in the United Kingdom for 2010-2014, presenting goods such as outerwear, gloves or hats marketed under these marks;

Enclosure 31: an extract from the August 2015 edition of Vogue España containing a prominently displayed Canada Goose advertisement.

The abovementioned evidence indicates that earlier trade marks ‘CANADA GOOSE’ and Image representing the Mark have been used for a substantial period of time in Europe. The marketing efforts suggest that the trade marks have a consolidated position in the market. In the early 1990s, the opponent began selling outerwear products in Europe under the name ‘Canada Goose’. ‘Canada Goose’ marks have since transitioned from a line of outerwear products worn exclusively by residents of Canada’s icy northern regions into a brand sported by celebrities, featured in magazines and worn by individuals the world over. The products presented in the catalogues and press clippings clearly depict the earlier trade marks ‘CANADA GOOSE’ and Image representing the Mark and relate to outerwear, coats, jackets, scarves, gloves and mittens. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade marks enjoy some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question and the relevant consumers.

However, the evidence does not succeed in establishing that the trade marks have 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 outerwear, coats, jackets, scarves, gloves and mittens, whereas there is no or little reference to the remaining goods and services. This is clear, for example, from the press clippings, where only the former are mentioned. Moreover, there is no mention in any of the previous evidence of the German and Swedish earlier marks, Image representing the Mark . Therefore, the evidence does not succeed in establishing the reputation for these earlier marks, and only earlier marks (1) and (2) will be taken into account in the following sections.

The ‘link’ between the signs

As demonstrated above, the earlier marks are reputed and the signs are identical or similar. 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 establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, ‘Intel Corporation’, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

Due to their visual and aural identity and, for part of the public, conceptual identity with earlier mark (1) and the inclusion of the contested mark in earlier mark (2), the visual, aural and conceptual similarities between the signs are undeniable and will be perceived immediately by consumers. The signs differ only in the additional words ‘Arctic Program’ in earlier mark (2) and in the figurative arrangements of the signs. Therefore, it is highly likely that the contested sign will bring to mind the earlier reputed marks.

As regards the distinctiveness of the earlier marks, for the non-English-speaking part of the public, the combination ‘CANADA GOOSE’ is inherently distinctive for the goods in question, in particular because it is a word combination without any meaning in relation to the goods designated by it, even for those consumers who may detect the concepts behind the element ‘CANADA’, since it does not suggest or make descriptive reference to the goods concerned. For the English-speaking part of the public, the combination ‘CANADA GOOSE’ is distinctive to a low degree, as it could indicate that the relevant goods are made of goose feathers originating from Canada. Moreover, the element ‘ARCTIC PROGRAM’ of earlier mark (2) is weak, as it could indicate that the relevant goods relate to a programme from the Arctic zone. Therefore, the public will not pay as much attention to these weak elements as to the other, more distinctive, elements of the mark. The same applies to the figurative elements of earlier mark (2), as they will be associated with Canada. The earlier marks have been found to enjoy a reputation in the European Union in connection with outerwear, coats, jackets, scarves, gloves and mittens. The inherently distinctive character and, for part of the public, the low degree of distinctiveness of the earlier marks are overcome by the reputation of the earlier trade marks, and therefore the relevant customers will perceive the combination ‘CANADA GOOSE’ as a reputed trade mark with a highly distinctive character.

The earlier marks have a reputation for a variety of clothing, whereas some of the contested goods in Classes 9, 14 and 18 are fashion accessories such as sunglasses, watches, jewellery and bags or purses. These are typically goods that are offered by clothing producers such as the opponent. Many designers, in particular of clothing, often extend their trade mark to fashion accessory goods, licensing their trade marks for sunglasses, watches, jewellery and bags or purses. Moreover, the goods target the same public. The fact that the goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 50). Therefore, there is a connection between the earlier goods covered by the reputed marks ‘CANADA GOOSE’ and Image representing the Mark and the following contested goods:

Class 9: Eyepieces (instruments containing -); interchangeable lenses; plastic lenses; optical lenses; ophthalmic lenses; lens; spectacles [optics]; spectacle holders; snow goggles; pince-nez cords; cyclists’ glasses; anti-glare glasses; pince-nez chains; fames for glasses; diving goggles; reading glasses; children’s eye glasses; spectacles cases; spectacle sheaths; pince-nez chains; sunglasses; swim goggles; sight glasses [optical]; cases adapted for glasses; spectacles for sports; spectacles [optics].

Class 18: Boxes made of leather; laces (leather -); straps for skates; shoulder straps; trunks and travelling bags; casual bags; all-purpose athletic bags; weekend bags; gym bags; tool bags of leather, empty; garment bags for travel made of leather; sling bags; carry-on bags; bags for climbers; beach bags; bags made of imitation leather; shoe bags for travel; flexible bags for garments; shoe bags; belt bags and hip bags; garment carriers; leather bags and wallets; handbags made of leather; handbags; canvas bags; evening handbags; travelling handbags; handbags made of imitations leather; multi-purpose purses; flight bags; handbags, purses and wallets; wallets including card holders; school book bags; document holders; bags [envelopes, pouches] of leather, for packaging; baggage and luggage; credit card holders made of leather; vanity cases, not fitted; tie cases; keycases; carrying cases for documents; luggage tags [leatherware]; key cases made of leather; driving licence cases; pullmans; portfolio cases [briefcases]; briefcases and attache cases; backpacks; rucksacks on castors; satchels; garment bags for travel; bumbags; duffel bags; travelling sets; purses.

The same connection could be found between the earlier goods and some types of special clothing, such as clothing especially made for laboratories; divers’ life jackets; divers’ boots; diving helmets; gloves for divers; diving suits in Class 9 or coverings of skins [furs] in Class 18. The goods have the same purpose, to protect the human body. It cannot be excluded that these goods could be produced by the same undertakings.

As regards the contested walking sticks; umbrellas in Class 18, these are typical hiking equipment, which is usually sold alongside the opponent’s outerwear products in the same establishments. Accordingly, there is also a similarity with regard to these goods.

Furthermore, navigation, guidance, tracking, targeting and map making devices; information technology and audiovisual equipment; signalling apparatus; alarms and warning equipment; signalling apparatus and instruments; life-saving apparatus and instruments; breathing apparatus for underwater swimming; divers’ masks; ear plugs for divers of the contested mark in Class 9 are used together with the earlier reputed goods or at least come from related industries; for example, navigation and tracking devices, warning, signalling and live-saving apparatus and instruments and information technology and audiovisual equipment, which include GPS devices, qualify as outdoor equipment and are complementary to the opponent’s goods.

Furthermore, there is a link with the contested saddlery, whips and animal apparel; straps (leather -); straps of leather (saddlery), which are typically equipment used for sports such as riding. These could be also sold through the same trade channels, and the consumers are the same as those of the reputed goods.

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 signs, that is to say, establish a mental ‘link’ between the signs for the abovementioned goods. 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).

While the relevant section of the public for the abovementioned goods covered by the conflicting marks is the same or overlaps to some extent, some of the contested goods are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public. These goods are the following:

Class 9: Optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; teaching apparatus and instruments; sports training simulators; simulators for the steering and control of vehicles; weapons simulators; opticians’ goods; optical glass; access control devices; security control apparatus; fire control apparatus; fire pumps; smoke detectors; baby monitors; electronic baby monitoring devices; safety equipment for forest-fire extinguishment; fire-extinguishing apparatus.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; trinkets coated with precious metal; trinkets of bronze; copper tokens; coins; silver objects d’art; commemorative shields; trophies coated with precious metal alloys; trophies coated with precious metals; trophies made of precious metal alloys; miniature figurines [coated with precious metal.

Class 18: Parasols; sausage skins and imitations thereof; leatherboard; imitation leather; leather and imitation leather; leather for shoes; casings, of leather, for springs; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; curried skins; animal skins, hides; worked or semi-worked hides and other leather; studs of leather; suitcase handles; collars for animals.

These are specific goods that have nothing in common with the goods of the earlier marks, as can be construed from the wording itself. These goods are very different from the contested goods, and it is unlikely that consumers would perceive the contested mark when used in relation to these goods as being somehow related to the earlier marks with reputation. None of these goods coincides with the opponent’s goods any of the relevant criteria: their natures and purposes differ, as do their producers, consumers and distribution channels. Furthermore, they do not have complementary natures and are not in competition with one another. These contested goods mainly target the professional public, with specific expertise, such as opticians, electricians, firefighters, security controllers, teachers, jewellers and metal artists and tanners. In conclusion, no link can be found between these goods and the reputed goods.

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 for these goods. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as far as these goods are concerned.

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 earlier marks are identical and the goods are not so far removed to avoid that the relevant public establishes a link between the marks. Because of this link, or connection, between the marks, the relevant public will transfer the that resides in the earlier CANADA GOOSE mark to the trademark applied for, and the CANADA GOOSE mark will lose its uniqueness and immediate ability to communicate.

As a result, the use of the trade mark applied for will take unfair advantage of the reputation of the CANADA GOOSE mark, in that it enhances the consumers’ readiness to take note of, and trust in, the products marketed under the trade mark applied for. This risk is enhanced by the high degree of recognition enjoyed by the CANADA GOOSE mark. In addition, the immediate association that the earlier CANADA GOOSE mark triggers on the part of the consumer due to the consistent and significant use as well as the significant efforts made by the opponent to maintain the uniqueness, would suffer detriment if another identical trade mark were allowed to be used in the market place for the goods in the application.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade marks and be detrimental to the distinctive character and repute of the earlier trade marks.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 9: Navigation, guidance, tracking, targeting and map making devices; optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; information technology and audiovisual equipment; teaching apparatus and instruments; sports training simulators; simulators for the steering and control of vehicles; weapons simulators; clothing especially made for laboratories; opticians’ goods; optical glass; eyepieces (instruments containing -); interchangeable lenses; plastic lenses; optical lenses; ophthalmic lenses; lens; signalling apparatus; alarms and warning equipment; access control devices; security control apparatus; signalling apparatus and instruments; life-saving apparatus and instruments; fire control apparatus; fire pumps; smoke detectors; baby monitors; electronic baby monitoring devices; safety equipment for forest-fire extinguishment; fire-extinguishing apparatus; divers’ life jackets; breathing apparatus for underwater swimming; divers’ boots; diving helmets; gloves for divers; divers’ masks; ear plugs for divers; diving suits; spectacles [optics]; spectacle holders; snow goggles; pince-nez cords; cyclists’ glasses; anti-glare glasses; pince-nez chains; fames for glasses; diving goggles; reading glasses; children’s eye glasses; spectacles cases; spectacle sheaths; pince-nez chains; sunglasses; swim goggles; sight glasses [optical]; cases adapted for glasses; spectacles for sports; spectacles [optics].

Class 14: Horological instruments; jewellery boxes and watch boxes; jewelry; gemstones, pearls and precious metals, and imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; trinkets coated with precious metal; trinkets of bronze; boxes of precious metal; copper tokens; key rings [trinkets or fobs]; key rings [trinkets or fobs] of precious metal; coins; silver objets d’art; commemorative shields; trophies coated with precious metal alloys; trophies coated with precious metals; trophies made of precious metal alloys; miniature figurines [coated with precious metal]; chronometric apparatus and instruments; horological articles; clock cases; apparatus for timing sports events; cases for watches [presentation]; watchstraps; watch straps of plastic; non-leather watch straps; watchstraps made of leather; watch straps made of metal or leather or plastic; timing clocks; alarm clocks; cases for watches and clocks; buckles for watchstraps; horological instruments having quartz movements; jewellery, clocks and watches; timepieces; watches; pocket watches; quartz watches; women’s watches; mechanical watches; watchbands that communicate data to smartphones; divers’ watches; digital clocks; clocks and watches, electric; miniature clocks; watches that communicate data to smartphones; watches containing an electronic game function; timekeeping systems for sports.

Class 18: Saddlery, whips and animal apparel; umbrellas and parasols; sausage skins and imitations thereof; walking sticks; boxes made of leather; leatherboard; coverings of skins [furs]; shoulder belts; laces (leather -); straps (leather -); straps for skates; shoulder straps; imitation leather; leather and imitation leather; leather for shoes; casings, of leather, for springs; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; curried skins; animal skins, hides; worked or semi-worked hides and other leather; studs of leather; suitcase handles; trunks and travelling bags; casual bags; all-purpose athletic bags; weekend bags; gym bags; tool bags of leather, empty; garment bags for travel made of leather; sling bags; carry-on bags; bags for climbers; beach bags; bags made of imitation leather; shoe bags for travel; flexible bags for garments; shoe bags; belt bags and hip bags; garment carriers; leather bags and wallets; handbags made of leather; handbags; canvas bags; evening handbags; travelling handbags; handbags made of imitations leather; multi-purpose purses; flight bags; handbags, purses and wallets; wallets including card holders; school book bags; document holders; bags [envelopes, pouches] of leather, for packaging; baggage and luggage; credit card holders made of leather; vanity cases, not fitted; tie cases; keycases; carrying cases for documents; luggage tags [leatherware]; key cases made of leather; driving licence cases; pullmans; portfolio cases [briefcases]; briefcases and attache cases; backpacks; rucksacks on castors; satchels; garment bags for travel; bumbags; duffel bags; travelling sets; straps of leather (saddlery); studs of leather; purses.

As seen above, the earlier trade mark was found to have a reputation for:

Class 25: Outerwear, coats, jackets, scarves, gloves and mittens.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

The trade mark applied for will also take unfair advantage of the earlier marks’ reputation, or piggy-back on their goodwill. The applicant will benefit from the attractiveness of the earlier marks, which are widely known in the market, misappropriating their power of attraction and advertising value.

The earlier CANADA GOOSE marks benefit from a reputation and prestige in the market, and the signs under comparison are identical. The marketing of products sold under the mark applied for would be made substantially easier, as consumers would of course believe that they are encountering the opponent’s reputed CANADA GOOSE brand. As a result, by not having to undertake its own marketing efforts, the applicant would exploit the reputation and prestige of the opponent’s earlier marks. Nothing further is required in order to establish unfair advantage (see to this effect 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 49).

The applicant ought not to be entitled to trade in the EU under the contested mark. To allow it to do so would take unfair advantage of the hard-earned reputation of the opponent’s earlier CANADA GOOSE marks in the EU, which it has built up by providing the highest quality products and following a systematic trade mark development strategy.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In order to determine if the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment which takes into account all the factors relevant to the circumstances of the case (10/05/2007, T-47/06, nasdaq, EU:T:2007:131, § 53, confirmed, on appeal, by 12/03/2009, C-320/07, nasdaq, EU:C:2009:146; see also 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 30 and 38; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58, 66; and 24/03/2011, C-552/09, TiMiKinderjoghurt, EU:C:2011:177, § 53).

As demonstrated above, there is a link between the signs. There is visual and aural identity and, for part of the public, conceptual identity between the contested mark and earlier mark (1) and visual, aural and conceptual similarity due to the inclusion of the contested mark in earlier mark (2). Moreover, there is a clear relationship between the goods in question, the relevant consumers are the same and the goods are marketed through the same distribution channels. Considering the link between the signs and the relationship between the goods in question and the reputation of the earlier marks, there is a high probability that for the goods concerned, the use of the mark applied for may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade marks and the prestige gained by the earlier marks in the European Union. For example, the use of the trade mark applied for could lead to the applicant’s goods being perceived as associated with or belonging to the opponent and, therefore, could facilitate the marketing of goods covered by the applicant’s mark. The applicant might also unfairly benefit from the reputation of the earlier marks, because it seems inevitable that the high quality of the products and the systematic way the earlier marks have been developed will be transferred to the applicant’s goods if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s marks in the minds of consumers.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character and the repute of the earlier trade marks if used to distinguish the following goods:

The opposition is not successful under Article 8(5) EUTMR insofar as the remaining goods are concerned, since, as already demonstrated, no link can be found in terms of its being based on the reputation of the earlier marks, namely for:

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade marks.

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 demonstrated 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 marks. It follows that there is no need to examine whether other types also apply.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

The opposition is not successful insofar as the remaining goods are concerned, namely for:

The examination of the opposition will continue on the basis of Article 8(1)(b) EUTMR for the goods for which the opposition is not successful based on Article 8(5).

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

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

The goods and services

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

(1) EUTM No 3 898 021

Class 25: Clothing and outwear namely coats, jackets, pull-overs, coveralls, vests, shirts, pants and anoraks; gloves and mittens.

(2) EUTM No 10 494 979

Class 25: Clothing, footwear, headgear; outerwear, coats, jackets, scarves, gloves and mittens.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel and tour services; arranging and operating adventure activities and excursions.

(3) Swedish trade mark registration No 313 150

Class 25: Clothing; footwear; headgear.

(4) German trade mark registration No 39 725 550

Class 20: Down-filled sleeping bags.

Class 25: Down-filled parkas, coats, jackets, sweaters, vests, sweaters, shirts, hats, caps, socks, anoraks.

The contested goods are the following:

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

These are specific goods that have nothing in common with the goods and services of the earlier marks, as can be construed from the wording itself. None of these goods coincides under any of the relevant criteria with the opponent’s goods; their natures and purposes differ, as do their producers, consumers and distribution channels. Furthermore, they do not have complementary natures and nor are they in competition with one another.

Contested goods in Class 14

Contested goods in Class 18

Conclusion

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

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

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.

CANADA GOOSE | Decision 2639501

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