Dragon Inside | Decision 2473430 - LIWE ESPAÑOLA, S.A. v. THOMAS MARSHALL GROUP
Date Published: Sep 28, 2017
OPPOSITION No B 2 473 430
Liwe Española, S.A., C/Mayor, 140, 30006 Puente Tocinos (Murcia), Spain (opponent), represented by Demarks & Law, Cirilo Amorós 57, 46004 Valencia, Spain (professional representative)
a g a i n s t
Thomas Marshall Group, 2 allée Jean de la Bruyère, 94000 Créteil, France (applicant), represented by Aude Vives-Albertini, Creatis/La Gaîté Lyrique 3bis, rue Papin, 75003 Paris, France (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 473 430 is partially upheld, namely for the following contested goods:
Class 16: Educational supplies.
Class 18: Luggage, bags, wallets and other carriers; walking sticks; umbrellas and parasols; sausage skins; saddlery, whips and animal apparel.
Class 25: Clothing; footwear; headgear.
2. European Union trade mark application No 12 895 025 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 12 895 025. The opposition is based on European Union trade mark registrations No 9 489 469 for the word mark ‘INSIDE.’, No 11 730 264 for the figurative mark and No 11 242 781 for the figurative mark
. The opponent invoked Article 8(1)(b) and Article 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 Union trade marks No 9 489 469 and No 11 730 264.
- The goods
The goods on which the opposition is based are the following:
European Union trade mark registration No 9 489 469
Class 25: Clothing, footwear, headgear; belts, handkerchiefs, bandanas (neckerchiefs), bathing suits, underwear; gloves (clothing); ear muffs (clothing); furs (clothing).
European Union trade mark registration No 11 730 264
Class 9: Teaching apparatus and instruments; mobile phone covers; sleeves for laptops; covers of paper for telephone receivers.
Class 18: Leather and imitations of leather, and articles made from these materials and not included in other classes; animal skins, hides, handbags, bags, backpacks, trunks and travelling bags, carry-on bags, business card holders, bill folds, portfolio bags and goods made of leather not included in other classes; umbrellas, parasols, canes and walking sticks; whips and saddlery.
The contested goods are the following:
Class 16: Adhesives for stationery or household purposes; decoration and art materials and media; filtering materials of paper; works of art and figurines of paper and cardboard, and architects’ models; stationery and educational supplies; paper and cardboard; money holders; printed matter; disposable paper products; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.
Class 18: Luggage, bags, wallets and other carriers; walking sticks; umbrellas and parasols; sausage skins and imitations thereof; saddlery, whips and animal apparel.
Class 25: Clothing; footwear; headgear.
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 16
The contested educational supplies include various instructional and teaching materials (except apparatus), such as arithmetical and calculating tables. Some of the goods included among the contested educational supplies in Class 16 have certain connections with the opponent’s teaching apparatus and instruments in Class 9 of earlier European Union trade mark registration No 11 730 264. The goods under comparison have the same general purpose, relevant public and distribution channels. Therefore, these goods are considered similar.
The remaining contested goods in Class 16, namely adhesives for stationery or household purposes; decoration and art materials and media; filtering materials of paper; works of art and figurines of paper and cardboard, and architects’ models; stationery; paper and cardboard; money holders; printed matter; disposable paper products; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics, are not sufficiently closely related to the opponent’s goods in Classes 9, 18 and 25. All the goods under comparison have different natures and methods of use. They are usually produced by different companies. In addition, they are usually distributed through different channels.
The mere fact that some of the applicant’s goods (e.g. printed matter) may have an educational purpose is not sufficient for them to be considered similar to the opponent’s teaching apparatus and instruments or to any of the opponent’s other goods in Classes 9, 18 and 25. The public would not expect publishers of educational books to manufacture and offer teaching apparatus (such as audiovisual apparatus or electronic simulators) through the same distribution channels and commercial outlets. The same applies to the contested money holders in Class 16 and some of the opponent’s goods, such as bill folds in Class 18. The fact that these sets of goods are used in relation to money is not enough to render them similar. They have different natures, purposes and methods of use (devices usually in the form of metal clips typically used to hold cash and credit cards in a very compact fashion versus cases for money and credit cards, usually made of leather or plastic, used to carry money). They do not have the same usual origins, distribution channels or sales outlets. Therefore, all the above contested goods are dissimilar to the opponent’s goods.
Contested goods in Class 18
The contested bags; walking sticks; umbrellas and parasols; saddlery, whips are also contained in the list of goods of earlier European Union trade mark registration No 11 730 264. Therefore, they are identical.
The contested luggage, other carriers includes, as a broader category, or overlaps with, the opponent’s trunks and travelling bags of earlier European Union trade mark registration No 11 730 264. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested wallets and the opponent’s bill folds, included in the list of goods of earlier European Union trade mark registration No 11 730 264, are synonymous, as both terms refer to small folding cases, usually of leather, for holding paper money, documents, etc. ‘Bill fold’ is an American and Canadian English version of the British word ‘wallet’ (see, for example, Collins English Dictionary online). Therefore, these goods are identical.
The contested sausage skins are similar to the opponent’s animal skins. They have a similar nature, because both are parts of processed slaughtered animals. Furthermore, they may have the same distribution channels and producers.
Earlier European Union trade mark registration No 11 730 264 is registered for articles made from these materials and not included in other classes (leather and imitations of leather); goods made of leather not included in other classes. According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the term goods made of leather and/or imitations of leather in Class 18 lacks the clarity and precision to specify the scope of protection that it gives, as it does not provide a clear indication of the goods covered. Goods made of leather or imitations of leather – when not specified – can have different characteristics or different purposes, can target different consumers, can be sold through different sales channels and therefore can relate to different market sectors. These goods in Class 18 can be generally defined as any items not included in other classes in the manufacture of which leather or imitations of leather are used as the main raw material.
Therefore, when comparing the contested animal apparel (clothing for animals, which could be made of leather) with the opponent’s goods made of leather not included in other classes, their nature can be considered the same, as they are or include goods made of the same raw material and it is reasonable to infer that the goods may be produced by the same companies, given that the required know-how and machinery (to cut and sew the raw material, etc.) may also be the same. However, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that the methods of use or distribution channels are the same or that they are in competition or complementary. Therefore, the goods are found to be similar to only a low degree.
The contested imitations thereof (of sausage skins) are not sufficiently closely related to any of the opponent’s goods in Classes 9, 18 and 25. Imitations of sausage skins are artificial casings for sausages, such as collagen, cellulose, plastic and extruded casings. These goods and the opponent’s goods have different natures, specific purposes and methods of use. For example, the opponent’s animal skins, hides in Class 18 refer to the skins of various kinds of animals, which are usually produced by different companies. The same applies to the opponent’s remaining goods. In addition, the contested goods and the opponent’s goods are usually distributed through different channels. Therefore, they are dissimilar.
Contested goods in Class 25
The contested clothing; footwear; headgear are also contained in the list of goods of earlier European Union trade mark registration No 9 489 469. Therefore, they are identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar to different degrees are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise looking to purchase raw materials for the manufacture of goods (e.g. sausage skins in Class 18). The relevant public’s degree of attention is average.
- The signs
European Union trade mark No 9 489 469 European Union trade mark No 11 730 264 | Dragon Inside |
Earlier trade marks | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Earlier European Union trade mark No 9 489 469 (earlier mark 1) is a word mark, consisting of the verbal element ‘INSIDE’ followed by a dot. The dot in this earlier mark has less visual impact than the word ‘INSIDE’.
Earlier European Union trade mark No 11 730 264 (earlier mark 2) is a figurative mark consisting of the verbal element ‘INSIDE’ in bold black letters in a slightly stylised typeface. The letters ‘IN’ are depicted in a circle with a double outline, thus separated from the remaining letters, ‘SIDE’. The mark has no elements that could be considered more dominant (visually eye-catching) than other elements.
The contested sign is the word mark ‘Dragon Inside’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof. The contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements.
The word ‘INSIDE’, present in all the marks under comparison, will be understood by the English-speaking part of the relevant public as ‘the inner side or surface; that side of anything which is within, or nearer to the centre, or farther from the outer edge or surface’ (information extracted from Oxford English Dictionary online on 05/05/2017 at http://www.oed.com). The rest of the public in the relevant territory will not attribute any meaning to the coinciding element of the marks, ‘INSIDE’. This word does not describe or allude to any characteristics of the relevant goods and is, therefore, of average distinctiveness, regardless of the part of the public taken into account.
The first word of the contested sign, ‘DRAGON’, will be understood by the English-speaking part of the public as referring to ‘a mythical monster, represented as a huge and terrible reptile, usually combining ophidian and crocodilian structure, with strong claws, like a beast or bird of prey, and a scaly skin; it is generally represented with wings, and sometimes as breathing out fire. The heraldic dragon combines reptilian and mammalian form with the addition of wings’ (information extracted from Oxford English Dictionary online on 05/05/2017 at http://www.oed.com). This word will also be understood as having the abovementioned meaning by other parts of the public, because its equivalent in some of the relevant languages is identical or very similar (e.g. ‘dragon’ in French and ‘dragón’ in Spanish). Other parts of the public will not attribute any meaning to the word ‘DRAGON’ (e.g. the Czech-, German- and Polish-speaking parts of the public). The word ‘DRAGON’ is of average distinctiveness for the entire relevant public, as it is not descriptive or otherwise weak in relation to the goods at issue.
The words ‘DRAGON’ and ‘INSIDE’ in the contested sign may be perceived as a logical and conceptual unit by the English-speaking part of the public, which understands the meanings of both elements, indicating that the object (‘DRAGON’) is situated within a thing or a place.
The applicant argues that the word ‘INSIDE’ in the contested sign is subsidiary to the word ‘DRAGON’, because it is an adverb, and refers to a case of the Boards of Appeal, 24/03/2010, R 955/2006-2, AUTOLEARNING INSIDE / INTEL INSIDE (fig.). However, in the abovementioned case the Boards of Appeal considered that the word ‘INSIDE’ had a weak distinctive character in relation to the relevant IT-related goods and services. In the present case, the goods at issue are not comparable to those in the case cited above, and the Opposition Division has no reason to consider the word ‘INSIDE’, used on its own (as in the earlier mark) or in combination with another verbal element (as in the contested sign) to be of limited distinctiveness. In any event, the coinciding element ‘INSIDE’ is present as an independent and distinctive element in both marks.
Consequently, the marks under comparison have no elements that could be considered more distinctive than other elements.
Nevertheless, with regard to the circle in earlier mark 2, it should be borne in mind that 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).
Visually, the signs coincide in the word ‘INSIDE’, which constitutes earlier mark 1 in its entirety, is the only verbal element of earlier mark 2, and is included as an identifiable and independent element in the contested sign. They differ in the additional verbal element at the beginning of the contested sign, ‘DRAGON’, in the dot placed at the end of earlier mark 1, and in the figurative element and stylisation of earlier mark 2, the latter having less impact in the sign for the reasons explained above. Therefore, the signs under comparison are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘INSIDE’, constituting the only verbal element of the earlier marks and present as the second word of the contested sign. The pronunciation differs in the sound of the first word of the contested sign, ‘DRAGON’, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
There is a conceptual link between the signs for the English-speaking part of the relevant public on account of the coinciding element ‘INSIDE’. The marks differ in the additional concept present in the contested sign, conveyed by the word ‘DRAGON’. Therefore, the marks are conceptually similar to a low degree for the English-speaking part of the relevant public on account of the distinctive verbal element ‘INSIDE’, which they have in common.
Other parts of the public (e.g. the French- and Spanish-speaking parts) will perceive the meaning of the contested sign’s element ‘DRAGON’, as explained above. However, the earlier marks have no meaning for those parts of the public. Since the earlier marks will not be associated with any meaning, the signs are not conceptually similar for those parts of the public.
For other parts of the public (e.g. the Czech-, German- and Polish-speaking parts of the public) none of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for those parts of the relevant public.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier marks have been extensively used in Spain and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods under comparison are partly identical, partly similar to different degrees and partly dissimilar. The earlier marks enjoy a normal degree of distinctiveness per se in relation to the relevant goods.
The signs are visually and aurally similar to an average degree, and, for part of the public, conceptually similar to a low degree on account of the coinciding verbal element ‘INSIDE’, present as the only word of the earlier marks and as the second verbal element of the contested sign. The marks differ in the additional first word of the contested sign, ‘DRAGON’, in the dot at the end of earlier mark 1, and in the figurative element and stylisation of earlier mark 2, which, as explained above, are not particularly striking and do not obscure or camouflage the verbal element ‘INSIDE’ in that mark.
The word ‘DRAGON’ in the contested sign will not go unnoticed by consumers, because it is at the beginning of the mark. However, the element ‘INSIDE’ of that sign, which is identical to the earlier marks’ verbal element, is distinguishable in the contested sign and plays an independent role in it.
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, the relevant consumers may legitimately believe that the contested trade mark, ‘Dragon Inside’, is a new version or a brand variation of the earlier marks. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, in relation to the identical or similar goods.
This finding is true even for the goods that are similar to only a low degree, since the impact of the differences between the signs is not sufficient to overcome the similarity between them. The similarity between the signs, due to their distinctive coinciding element ‘INSIDE’, outweighs the low degree of similarity between some of the goods.
Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR on the basis of the opponent’s European Union trade mark registrations No 9 489 469 and No 11 730 264.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to different degrees) to the goods of the abovementioned earlier trade marks.
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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
The opponent has also based its opposition on European Union trade mark registration No 11 242 781 for the figurative mark , registered for the following goods:
Class 18: Leather and imitations of leather, and articles made from these materials and not included in other classes; animal skins, hides, handbags, purses, rucksacks, trunks and travelling bags, carry-on bags, business card holders, bill folds, portfolio bags and goods made of leather not included in other classes; umbrellas, parasols, canes and walking sticks; whips and saddlery.
Class 25: Clothing, footwear, headgear; belts, handkerchiefs, bandanas (neckerchiefs), bathing suits, underwear; gloves [clothing]; ear muffs [clothing]; furs [clothing].
The goods in Classes 18 and 25 of this earlier mark are also protected by earlier European Union trade mark registrations No 9 489 469 and No 11 730 264, already examined above, either because they are identically contained in the lists of goods of those earlier marks, or because they are included in the broader categories of goods covered by those marks (e.g. rucksacks in Class 18 of earlier European Union trade mark registration No 11 242 781 are included in the broader category of bags covered by earlier European Union trade mark registration No 11 730 264). The Opposition Division further notes that purses in Class 18 of this earlier mark (small bags or pouches, often made of soft leather, for carrying money, especially coins) are dissimilar to the contested dissimilar goods in Classes 16 and 18, and in particular to money holders in Class 16 (devices for holding money usually in the form of metal clips), since the goods under comparison have different natures, purposes (carrying money with oneself versus storing money in one place in a compact form) and methods of use, and they are usually produced by different companies and distributed through different channels of trade. Therefore, the outcome cannot be different with respect to the contested goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
This finding would still be valid even if earlier European Union trade mark registration No 11 242 781 were considered to enjoy a high degree of distinctiveness, as claimed by the opponent. Given that the dissimilarity between the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.
Consequently, the examination continues in relation to the remaining contested goods on the grounds of Article 8(5) EUTMR.
REPUTATION – ARTICLE 8(5) EUTMR
The opponent invoked Article 8(5) EUTMR in relation to some of the goods of the earlier marks on which the opposition is based, for which the opponent claimed reputation in Spain.
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.
- Reputation of the earlier trade marks
According to the opponent, the earlier trade marks have a reputation in Spain.
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 21/05/2014. However, the contested trade mark has a priority date of 12/04/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation. The opponent claimed reputation for some of the goods in Classes 18 and 25 of earlier European Union trade mark registrations No 9 489 469, No 11 242 781 and No 11 730 264, namely for clothing; footwear; headgear; bags; wallets (each of the earlier marks is registered for some of the abovementioned goods in Classes 18 and 25).
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 23/06/2015, the opponent submitted the following evidence:
- Exhibit 1: articles and publications in Spanish, with translations into English, from one Spanish website, modaes.es, dated between 17/11/2010 and 28/02/2014. The publications provide information about the performance of the opponent’s company and its network of shops under the brands ‘Inside’ and ‘Inside Shoes’. They mention the opponent’s investments in the development of its ‘Inside’ shops and provide information about the company’s net profit in various years. They state, for example, that the opponent’s company invested EUR 7 million in the development of its ‘Inside’ shops in 2010, and that the opponent’s company increased its profit by 73% in the first quarter of 2011. Some publications from 2011 state that the opponent’s company, using the marks ‘Solidly’, ‘Grin’s’, ‘Cyberjeans’, ‘Key Coconut’, ‘James Dean’, ‘Locarino’ and ‘Pepe Pardo’, plans to cease using multiple marks and focus on the development of a network of its own shops under the marks ‘Inside’ and ‘Inside Shoes’. An article dated 22/02/2012 states that ‘Inside’, which is owned by the Liwe Española group, is experiencing rapid growth in the men’s fashion sector, although it also offers women’s fashion articles. It also states that there are nearly 300 ‘Inside’ shops. Another article, dated 28/02/2012, states that the turnover of the opponent’s group continues to grow and has risen to EUR 96.14 million, from EUR 75.92 million in the previous year. A publication dated 21/05/2012 mentions the opponent’s company, which runs the ‘Inside’ chain of shops, as one of the major fashion companies in Spain. It states that, nowadays, the company focuses on the development of ‘Inside’, a young, fashionable chain offering cheap prices. An article dated 30/08/2013 states that the opponent is comprehensively developing its chain ‘Inside’, specialising in youth fashion at accessible prices, and that its activity focuses on Spain. It also states that, in 2013, the company owned 307 shops in Spain. A publication dated 28/02/2014 mentions that during 2013 the opponent’s company invested EUR 7.1 million in opening new shops. Another article dated 28/02/2014 states that 97% of the opponent’s sales are sales in the Spanish market, and that the company, the proprietor of the ‘Inside’ chain of shops, realised EUR 5.87 million in profit in 2013.
- Exhibit 2: an annual report, in Italian, on the opponent’s company, Liwe Española, S.A., for the year 2013. In its observations, the opponent has translated into English the parts it considers relevant. The translated parts of the report indicate that sales figures for the opponent’s company during the period 2010-2013 grew from EUR 73 436 in 2010 to EUR 115 889 in 2013. It also indicates that the number of employees of the company in 2013 was 1 392. According to this document, in 2013 the company’s net turnover increased by 7.2% in comparison with 2012, reaching EUR 115 888 886. All of the company’s sales were made through stores operating under the brands ‘Inside’ and ‘Inside Shoes’, and sales under the trade marks ‘Inside’ and ‘Inside Shoes’ represented 100% of the company’s sales in 2012 and 2013. The document indicates that the opponent’s company was founded in 1973 and that its area of activity is the manufacturing and marketing of clothing in Spain and in other countries. It is indicated that, at the end of 2013, the opponent owned a network of 303 stores in Spain, 11 stores in Portugal and 5 stores in Italy. The report was subject to an external audit.
- Exhibit 3: a printout bearing the indication ‘Bolsa de Madrid’, containing some financial data and stock information about the opponent’s company Liwe Española, S.A., concerning the period 2010-2015. It indicates the company’s most recent share prices and turnover as at 18/02/2015. The market capitalisation of the company for 2010-2015 is also provided.
- Exhibit 4: a decision of the Spanish Patent and Trade Mark Office, with a translation into English, issued on 28/04/2015 in opposition proceedings against the Spanish trade mark application ‘MUTANT INSIDE GRIPS & FIT WEAR’, stating that the contested sign might take unfair advantage of the reputation of the opponent’s mark ‘Inside’.
The material submitted demonstrates that the opponent’s company has been operating in the relevant market since 1973 and that it has a long-standing presence on the market as a retailer of clothing and fashion articles. However, for a finding of reputation, not only does use of the marks have to be shown, but a certain threshold, in terms of the relevant public’s knowledge of the marks, must also be reached. What is important is the public’s awareness of the marks, rather than the availability of goods or services under them.
The evidence provides no information on the actual degree of recognition of the marks among the relevant public or the market share held by the earlier marks in relation to goods in Classes 18 and 25. The articles from the internet do not provide information about actual trade mark awareness. These documents do not refer to the public’s recognition of the mark. Although they mention that the opponent has invested in its chain of ‘Inside’ stores, there is no information about market knowledge or actual trade mark awareness on the part of the relevant public in Spain in relation to the goods. There is no information on the actual impact of this publicity on the public’s perception either, since this cannot be measured without reference to sales, opinion polls, market surveys or similar evidence.
The net turnover figures of the opponent’s company mentioned in the annual report cannot be correlated to the size of the particular market as a whole or to the total number of players in the market, since the opponent has not provided any such information. Figures for turnover and sales are more useful as indirect indications to be assessed in conjunction with the rest of the evidence, rather than as direct proof of reputation. Reputation is a question more of proportions than of absolute numbers. In particular, such indications can be particularly helpful for completing information given in percentages regarding market share and awareness, as they create a fuller picture of the market. In contrast, where the market share of the products for which the mark is used is not given separately, it will not be possible to determine whether a given turnover corresponds to a substantial presence on the market or not, unless the opponent also submits evidence showing the overall financial size of the relevant market, so that its percentage share may be determined. Information about market size and market share is particularly important in relation to the sector in which the opponent has its core business (the clothing and fashion sector), which is a fairly atomised and competitive sector, with many different participants: a large number of potential purchasers for the goods in question with many competitors, manufacturers and designers in the sector. Since the opponent did not provide any information referring to its position in the market or to the overall size of that market, the Opposition Division cannot draw solid conclusions about whether or not the turnover and sales volumes indicated by the opponent correspond to a substantial presence in the market.
Furthermore, the documents demonstrate that the opponent’s area of activity is the manufacturing and marketing of clothing. However, most of the articles refer to ‘Inside’-branded shops and the opponent’s investment in the opening of such shops, and it becomes clear that until 2011 the opponent offered through its shops goods under various trade marks (‘Solidly’, ‘Grin’s’, ‘Cyberjeans’, ‘Key Coconut’, ‘James Dean’, ‘Locarino’ and ‘Pepe Pardo’). Nothing in the documents submitted supports a finding that the opponent acquired reputation for the ‘Inside’ marks in relation to goods in Classes 18 and 25 in the following 2 years before the relevant date (i.e. before 12/04/2014). Without providing any information from independent sources such as opinion polls and market surveys to demonstrate knowledge of the marks, the evidence submitted by the opponent is not particularly convincing, as it does not prove that the investment made by the opponent has succeeded in building and maintaining the well-known character of the earlier marks in relation to goods in Classes 18 and 25.
As regards the decision issued by the Spanish Patent and Trade Mark Office, it states that the trade mark ‘INSIDE’ has a reputation without making any reference to the specific goods or services for which the mark is reputed. Furthermore, as far as decisions of the Spanish Office are concerned, the European Union trade mark system is an autonomous system, consisting of a set of rules and objectives that are specific and applied independently of any national system. There might be differences between the substantive and procedural conditions applicable in national proceedings and those applicable in opposition proceedings before the Office. Firstly, there may be differences in how the requirements for reputation are defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given in national proceedings. Furthermore, national courts may be able to take into account ex officio facts known to them directly, whereas the Office may not, pursuant to Article 76 EUTMR. For these reasons, the probative value of national decisions will be considerably enhanced if the conditions of law and the facts on the basis of which they were taken are made abundantly clear. However, in the present case these elements are absent, which makes it difficult both for the applicant to exercise its right of defence and for the Office to assess the decision’s relevance with a reasonable degree of certainty.
In summary, the Opposition Division considers that, although the opponent has made use of its marks in Spain, the evidence submitted does not demonstrate that the marks are widely known and recognised by the public in the relevant territory for the relevant goods in Classes 18 and 25. Only if the evidence is coupled with sufficient indications of trade mark awareness and of the overall performance of the marks in the market will it be possible to establish with a reasonable degree of certainty whether or not the marks enjoy reputation.
Under these circumstances, and in the absence of any independent and objective evidence that would enable solid conclusions to be drawn about the degree of recognition of the earlier marks by the relevant public, the Opposition Division finds that the evidence submitted by the opponent cannot be conclusive of reputation on its own because it does not provide information about the actual level of awareness in respect of the trade mark or the market share held by the marks and is, therefore, not sufficient to clearly establish all the facts required to safely conclude that the earlier marks are known by a significant part of the public for the relevant goods in Classes 18 and 25. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.
The applicant argues in its observations that the opponent did not submit translations of a significant part of the evidence and that therefore this evidence should not be taken into consideration. However, since the opponent failed to prove that the earlier trade marks have a reputation, this argument of the applicant can be set aside.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) 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
Catherine MEDINA | Boyana NAYDENOVA | Martina GALLE |
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.