H | Decision 2668260

Date Published: Oct 1, 2017

OPPOSITION No B 2 668 260

Hermes International (Société en Commandite par Actions), 24, rue du Faubourg Saint Honoré, 75008 Paris, France (opponent), represented by Jacobacci & Partners S.p.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

Colmena Road Siete SL., C/Juan Ramón Jimenez 8, 03203 Elche/Alicante, Spain (applicant), represented by Salvador Ferrandis IP Legal SLP, C/ Joaquin Costa nº24, 28002 Madrid, Spain (professional representative).

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

DECISION:

1.        Opposition No B 2 668 260 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 534 201. The opposition is based on the following earlier trade marks:

1. International trade mark registration No 1 109 591 designating the European Union,
2. European Union trade mark registration No 10 798 551,
3. Italian trade mark registration No 1 525 566,
4. French trade mark registration No 3 346 728,
5. French trade mark registration No 96 635 171,
6. International trade mark registration No 866 763 designating the Benelux countries, Germany, Spain and Italy,
7. International trade mark registration No 669 026 designating the Benelux countries, Germany, Spain and Italy,
8. European Union trade mark registration No 8 811 267,
9. International trade mark registration No 948 068 designating the European Union,
10. International trade mark registration No 1 043 361 designating the European Union.

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

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

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

1. The goods

The goods on which the opposition is based are the following

1. International trade mark registration No 1 109 591 designating the European Union

Class 18:        Goods of leather or imitation leather (excluding cases adapted to the products for which they are intended, gloves and belts), especially handbags, traveling bags, rucksacks, school bags, school bags and satchels, beach bags, shopping bags, garment bags for travel, sports bags, diaper bags, reticules (handbags), compacts, wheeled shopping bags, sling bags for carrying infants (baby carriers), packet wallets, purses, card cases (notecases), briefcases, attaché cases, Key cases (leatherware), trinket baskets of leather, trunks and traveling bags, traveling trunks, traveling sets for holding toiletries (empty), vanity cases, clutch bags (evening handbags), saddlery, saddle trees, bridles (harness), bridoons, belts and straps of leather (saddlery), reins, horseshoes, horse collars, stirrups, parts of rubber for stirrups, stirrup leathers, harnesses, reins, halters, fastenings for saddles, leather bands, shoulder belts (straps) of leather, Knee-pads for horses, blinkers, horse blankets, saddle cloths for horses, pads for riding saddles, whips, cat o' nine tails, riding whips, saddle boxes, riding saddles, bits for animals (harness), harness fittings, pull straps, boxes of leather or leatherboard, hat boxes of leather, parasols, umbrellas, sunshades, umbrella rings, umbrella covers, umbrella sticks, walking stick and umbrella handles, walking stick seats, suitcase handles, collars for animals, animal leashes, muzzles, coats for animals, bags for animals, harness for animals, animal skins, bags for campers, leather trimmings for furniture, game bags, furniture coverings of leather, moleskin (imitation leather), small bags and bags (envelopes, pouches) of leather for packaging.

Class 25:        Clothing for men, women and children, pajamas, dressing gowns, nightgowns, layettes, dressing gowns, pants, bathing trunks, bathing suits, swimsuits, overalls, boas (necklets), teddies (undergarments), pullovers, sweaters, vests, Knitwear, shirts, shirt yokes, shirt fronts, short-sleeve shirts, collars, ready-made clothing, underwear, breeches for wear, underpants, underwear, saris, tee-shirts, trousers, jackets, suits, uniforms, coats, gabardines (clothing), waterproof clothing, overcoats, parkas, skirts, frocks, boots, half-boots, esparto shoes or sandals, beach shoes, wooden shoes, sports shoes, slippers, footwear, slippers, bath sandals, boot uppers, fittings of metal for footwear, fashionable clothing accessories for men, women and children, namely hats, caps, bonnets, top hats, gloves (clothing), mittens, mitts, neckties, belts (clothing), money belts (clothing), scarves, Windsor ties, pocket squares (clothing), sashes for wear, shawls, stockings, socks, tights, suspenders, bibs not of paper, headbands (clothing), leather and imitation leather clothing, fur stoles, furs (clothing), scarf rings, pareus, aprons (clothing).

2. European Union trade mark registration No 10 798 551

Class 18:         Goods of leather and imitations of leather (except cases adapted for the goods they are intended to contain, gloves and belts), in particular: handbags, travelling bags, backpacks, school bags, school satchels, beach bags, shopping bags, garment bags for travel, sports bags, baby changing bags, plaid bags, handbags, bags with wheels, sling bags for carrying infants (baby carriers), pocket wallets, purses, card cases (notecases), c:focument holders, attaché cases, key cases (leather ware), storage tidies of leather, trunks and travelling bags, travelling cases, holdalls and vanity cases (not fitted), clutch bags (evening bags), minaudières, saddlery, saddle trees, bridles (harness), bridoons, straps of leather (saddlery), reins, horseshoes, horse collars, stirrups, parts of rubber for stirrups, stirrup leathers, harness, reins, head-stalls, halters, fastenings for saddles, bands of leather, leather shoulder straps, knee-pads for horses, blinkers (harness), horse blankets, saddle cloths for horses, pads for horse saddles, whips, cats o'nine tails, riding crops, saddle casings, riding saddles, bits for animals (harness), harness fittings, straps of leather, boxes of leather or leatherboard, hat boxes of leather, boxes of vulcanised fibre, parasols, umbrellas, sunshades, umbrella rings, umbrella covers, umbrella sticks, handles for walking sticks and umbrellas, walking-stick seats, suitcase handles, collars for animals, leads for animals, muzzles, coats for animals, bags for animals, harness for animals, animal skins, hides, bags for campers, leather leads, leather thread, trimmings of leather for furniture, game bags (hunting accessories), furniture covers of leather, moleskin (imitation of leather), sachets and bags (envelopes, pouches) of leather for packaging, toiletry cases and travelling sets of textile, plaid bags of textile, baby changing bags of textile.

Class 25:         Clothing for men, women and children, pyjamas, dressing gowns, nightshirts, layettes, dressing gowns, trunks, swimming trunks, swimming costumes, swim suits, overalls, boas (necklets), bodies (underwear), pullovers, sweaters, vests, knitwear (clothing), shirts, shirt yokes, shirt fronts, undershirts, shoulder wraps, articles of ready-made clothing, lingerie, panties, briefs, underwear, saris, t-shirts, trousers, jackets, suits, uniforms, topcoats, gabardines (clothing including garments), waterproof clothing, topcoats, parkas, skirts, dresses, boots, half-boots, esparto shoes or sandals, beach shoes, clogs (footwear), sport shoes, booties, footwear, slippers, bath sandals, boot uppers, fittings of metal for shoes and boots, fashion clothing accessories for men, women and children, namely hats, caps, bonnets, top hats, gloves (clothing), muffs, mittens, neckties, belts (clothing), money belts (clothing), scarves, cravats, pocket squares, sashes, shawls, stockings, socks, tights, braces, bibs, not of paper, headbands (clothing), clothing of leather and imitations of feather, stores (furs), furs (clothing), rings for scarves, sarongs, gowns (clothing).

3. Italian trade mark registration No 1 525 566

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas and walking sticks; whips, harness and saddlery.

Class 25:        Clothing and underwear; woven and knitted, included boots, footwear and slippers.

4. French trade mark registration No 3 346 728

Class 18:        Leather and imitaion leather goods (excluding cases designed for specific articles, gloves and belts), handbags and travelling bags, rucksacks, beach bags, shopping bags, wallets, leather purses, card cases, briefcases, leather key cases, trunks and valises, toiletry bags (leatherware), vanity cases; decorative pattern, fixed or incorporated onto handbags, travelling bags, rucksacks, beach bags, shopping bags, wallets, leather purses, card cases, briefcases, leather jey cases, trunks and valises, toiletry bags (leatherware), vanity cases.

Class 25:        Clothing for men and women, namely boots, shoes and slippers; fashion clothing accessories for men and women, namelty headgear, gloves, neckties, belts, scarves, sashes for wear, shoes and stockings, braces.

5. French trade mark registration No 96 635 171

Class 18:        Leather and imitation leather goods; bags; namely handbags and travelling bags, rucksacks; wallets; purses; card cases; briefcases; leather key cases; trunks and travelling bags; umbrellas; parasols; walking stick whips; harnesses; riding saddles and saddlery.

Class 25:        Clothing for men and women, namely boots, shoes and slippers; fashion clothing accessories for men and women, namely headgear and belts.

6. International trade mark registration No 866 763 designating the Benelux countries, Germany, Spain and Italy,

Class 18:        Leather and imitation leather goods (excluding cases designed for specific articles, gloves and belts), handbags and travelling bags, rucksacks, beach bags, shopping bags, wallets, leather purses, card cases, briefcases, leather key cases, trunks and valises, toiletry bags (leatherware), vanity cases; decorative designs printed, fixed or incorporated onto handbags, travelling bags, rucksacks, beach bags, shopping bags, wallets, leather purses, card cases, briefcases, leather key cases, trunks and valises, toiletry bags (leatherware), vanity cases.

Class 25:        Clothing for men and women, namely boots, shoes and slippers; fashion clothing accessories for men and women, namely headgear, gloves, neckties, belts, scarves, sashes for wear, shoes and stockings, braces.

7. International trade mark registration No 669 026 designating the Benelux countries, Germany, Spain and Italy

Class 18:        Leather and imitation leather goods; bags; namely handbags; handbags and travelling bags, rucksacks; wallets; purses; card cases, briefcases; leather key cases; trunks and travelling bags; umbrellas; parasols; walking sticks; harnesses; riding saddles and saddlery.

Class 25:        Clothing for men and women, namely boots, shoes and slippers; fashion clothing accessories for med and women, namely headgear and belts.

8. European Union trade mark registration No 8 811 267

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25:        Clothing, footwear, headgear.

9. International trade mark registration No 948 068 designating the European Union

Class 18:        Leather or imitation leather goods (excluding cases adapted to the products for which they are intended, gloves and belts), handbags, travelling bags, rucksacks, beach bags, shopping bags, garment bags for travel, wallets, leather purses, card cases, document cases, leather key cases, pin trays of leather, trunks and suitcases, toilet bags, saddlery articles; purses of precious metal or plated therewith, toiletry sets and vanity cases.

Class 25:         Clothing for men, women and children, boots, shoes and slippers, fashionable clothing accessories for men, women and children, namely hats, knitted caps, gloves, mittens, ties, belts, scarves, shoulder wraps, stockings, socks, tights and braces.

10. International trade mark registration No 1 043 361 designating the European Union.

Class 18:        Leather or imitation leather goods (excluding cases adapted to the products for which they are intended, gloves and belts), especially handbags, traveling bags, rucksacks, school bags, school bags and satchels, beach bags, shopping bags, garment bags for travel, sports bags, diaper bags, plaid bags, wheeled shopping bags, small bags and bags (envelopes, pouches) made of leather for packaging purposes, sling bags for carrying infants (port-babies), wallets, leather purses, card cases (wallets), document cases, attache cases, key cases (leather ware), tidies made of leather, trunks and suitcases, cases intended to contain toiletry articles (empty), pouches (leather goods), saddlery, leather or leather-board boxes, parasols, umbrellas.

Class 25:        Clothing for men, women and children, dusters, boots, shoes and slippers, fashionable clothing accessories for men, women and children, namely hats, caps, bonnets, gloves (clothing), neckties, belts (clothing), scarves, pocket squares (clothing), sashes for wear, stockings, socks, tights and suspenders (braces).

The contested goods are the following:

Class 18:        Leather and his/her imitations, portfolio bags, purses, casual bags, hands bags, backpacks, animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery, key-cases of leather and skins.

Class 25:        Clothing, footwear, headgear, including waist belts.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. Relevant public — degree of attention

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

In the present case, the goods assumed to be identical are directed mostly at the public at large but some of them (such as leather or animal skins) are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention will be average for all the goods except for the specialised goods such as those mentioned above for which the degree of attention will be high. This is because of the specialised nature of these goods and the fact that their choice will have an important impact on the relevant customer’s business.  

3. The signs

IR No 1 109 591    EUTM No 10 798 551  IT No 1 525 566  FR No 3 346 728   FR No 96 635 171   IR No 866 763   IR No 669 026   EUTM No 8 811 267    IR No 948 068    IR No 1 043 361
Earlier trade marks	Contested sign

The relevant territories are the European Union, for International trade mark registrations No 1 109 591, No 948 068  and No 1 043 361, and also for EUTMs No 10 798 551 and No 8 811 267.

The relevant territories are also Italy (for Italian trade mark registration No 1 525 566) and France (for French trade mark registrations No 3 346 728 and No 96 635 171).

Lastly, for IRs No 866 763 and IR No 669 026, the relevant territories are the Benelux countries, Germany, Spain and Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier trade marks are all variants of the upper-case letter ‘H’ (i.e. slightly different in colour and typeface, all of them being of standard typeface or very close to it), accompanied in some cases by additional figurative elements. The earlier marks are all figurative trade marks with the exception of trade mark No 8 which is a three-dimensional trade mark.

The element ‘H’ included in all the earlier marks has no meaning for the relevant public and is, therefore, distinctive.

The figurative element consisting of a horse, a carriage and a coachman in the earlier trade marks Nos 2, 5 and 7 will be associated with equestrianism. Bearing in mind that the relevant goods include equestrian articles, these elements are weak for the goods in Classes 18 and 25 that are or can be related to equestrianism, for example saddlery or boots.

Earlier trade marks Nos 1, 2, 5, 7, 9 and 10 contain relatively simple figurative elements, namely a circle, oval or stripes, having a rather decorative role. Consequently, these elements are weak.

The contested sign is a figurative sign essentially consisting of two short vertical lines on the left crossed in the middle by a long horizontal line stretching to the right. The sign can be perceived either as a highly stylised letter ‘H’ or as a purely figurative sign. The Opposition Division will further focus only on the part of the public that perceives the contested sign as a highly stylised letter ‘H’ which is the best case scenario for the opponent.

Visually, the signs are similar in that they contain two vertical lines crossed by a horizontal line in the middle. In the earlier trade marks these lines essentially depict a standard letter ‘H’ whereas in the contested sign, the horizontal line is so unusually long and stretching to the right (outside the two vertical lines) that the sign resembles a letter ‘H‘ only remotely.

According to the opponent, there is a visual similarity in that the letter ‘H‘ in the earlier trade marks as well as in the contested sign is written in the same font, namely slab serif font (with a small line attached to the end of a stroke in the letter). The Opposition Division considers that a small line at the end of a stroke (a serif) is a common typographical feature that will not be given particular importance by the public. In addition, the serifs are by definition quite small (i.e. not visually outstanding) and their visual impact in the contested sign is outweighed by the unusually long horizontal line. On the whole, the use of serifs in the marks is nearly negligible for the visual comparison of the signs.

The marks differ in all the additional figurative elements of the earlier trade marks as shown above (such as a circle or a picture of a horse, a carriage and a coachman) that have no counterparts in the contested sign.

Therefore, the signs are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is identical because they will be pronounced as a single letter ‘H’.

Conceptually, the earlier trade marks convey the concept of the single letter ‘H’ and, in addition, earlier trade marks Nos 2, 5 and 7 contain the concept of a horse, a carriage and a coachman. The contested sign also conveys the concept of the single letter ‘H’. Consequently, the contested mark is conceptually identical to the earlier marks consisting only of a letter ‘H’, and conceptually similar to an average degree to the earlier trade marks containing additional elements (i.e. horse, carriage and coachman depictions).

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

4. Distinctiveness of the earlier marks

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

According to the opponent, the earlier marks have been extensively used 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’). The examination will proceed on the assumption that the earlier marks have enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The goods have been assumed to be identical. The degree of attention of the relevant public will be either average or high.

The Opposition Division has assumed in part d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Regarding the marks, the length of the signs or of their verbal element (that normally has a greater impact on the consumer than figurative elements) may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. This is particularly the case with marks consisting of only one letter.

The signs have been found to be aurally identical and conceptually either identical or similar to an average degree. However, in both respects, the Opposition Division must attach the appropriate weight to each of these aspects of identity/similarity and the impression that they are capable of producing on the average consumer, who is deemed to be reasonably observant.

With respect to the aural identity, given that the only sound in each case is that of a single letter, the identity in sound attaches to the most basic, irreducible unit of language for word formation. While such identity cannot be overlooked completely, its capacity to contribute to confusion on the part of the consumer is minimal in the view of the Opposition Division. The fact that two marks are identical in the sound of one single letter is not considered to leave much of an impression on a reasonably observant consumer, especially considering that the goods in question are not normally ordered in a way that requires particular importance to be placed on the aural identity. Furthermore, the marks in dispute are figurative marks (or, in the case of earlier trade mark No 8, a 3D mark), which is to say that both the opponent and the applicant opted to apply for a particular visual depiction of the letter in question.

As regards conceptual identity or similarity, again, the identity or similarity in question attaches to one of the most basic semantic concepts that a mark can represent: a single letter. Concepts do not come in a much more basic form than this, and the mere fact that there is conceptual identity/similarity between two marks based only on the fact that they contain a representation of the same letter cannot be given much weight.

As mentioned above, the opponent and applicant opted to apply for a particular visual depiction of the letters in their respective marks. Given the minimal impact of the aural identity and conceptual identity/similarity, owing merely to one common letter, the assessment of likelihood of confusion must also take into account, to a significant extent, the visual impression that arises from the particular way in which the marks are represented. In this regard, it must be noted that in general, no likelihood of confusion will arise between two signs with a single letter which are stylised in a different way or which consist of different graphic representations of the same letter.

This appears to be the case in the present proceedings. The earlier trade marks consist essentially of a depiction of a fairly standard letter ‘H’ (accompanied, in some cases, by additional figurative elements) whereas the contested sign is highly stylised in a particular way which resembles a letter ‘H‘ only remotely.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). These considerations apply to all the goods in question in Classes 18 and 25 which are all, in essence, fashion articles. Therefore, the considerable visual differences between the signs caused by the different stylisation of the single letter ‘H’ are particularly relevant when assessing the likelihood of confusion between them.

Therefore, taking into consideration all the above, in particular the existing visual differences between the signs, and the fact that the only possible coincidence in the signs concerns an element that imparts a minimal sound and concept to the marks, the Opposition Division considers that there is no likelihood of confusion on the part of the public, even assuming that all the goods are identical and the earlier trade marks enjoy enhanced distinctiveness. In this connection it must be noted that the assumed enhanced distinctiveness is attached to the particular way in which the earlier trade marks are stylised (including the letter ‘H’ alone) and not to the single letter ‘H’ as such in any possible stylisation.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. These decisions concern cases of single-letter trade marks where likelihood of confusion was found. However, in all the decisions referred to by the opponent, the single letters were stylised in a similar way which is not the case here.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same letter ‘H’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

One of the conditions is that the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.

In the present case, as mentioned above the earlier trade marks consist essentially of a depiction of a fairly standard letter ‘H’ (accompanied, in some cases, by additional figurative elements) whereas the contested sign is highly stylised in a particular way which resembles a letter ‘H‘ only remotely. The depiction of the letter ‘H‘ in the marks is considered to be so different that from the consumers‘ point of view, the contested sign does not display characteristics capable of associating it with the alleged family of marks.

Consequently, the opponent’s argument on family of marks must be dismissed.

The opponent’s reference to the parallel applicant’s EUTM application No 14 508 411  using slab serif font is irrelevant for the present proceedings because the task of the Opposition Division is to compare only the trade marks in dispute here. The existence of a parallel application does not have any impact on the assessment of likelihood of confusion in the present case.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition under Article 8(1)(b) EUTMR must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public that perceives the contested sign as a purely figurative sign rather than as a stylised letter ‘H’. This is because that part of the public will perceive the signs as being even less similar.

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use/reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use/reputation.

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.

1. The signs

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

2. The ‘link’ between the signs

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.

In the present case, even assuming reputation of the earlier trade marks and identity of the goods, the marks are not similar enough for the public to readily establish a mental link between them. As mentioned above, the earlier trade marks consist essentially of a depiction of a fairly standard letter ‘H’ (accompanied, in some cases, by additional figurative elements) whereas the contested sign is highly stylised in a particular way which resembles a letter ‘H‘ only remotely. The considerable visual differences between the signs are a decisive factor in this case because the goods in question are, in essence, fashion articles which are purchased after a visual inspection of the goods. In addition, the assumed reputation of the earlier trade marks is attached to the particular way in which the earlier trade marks are stylised (including the letter ‘H’ alone) and not to the single letter ‘H’ as such in any possible stylisation. Consequently, the similarities between the contested trade mark and the earlier trade marks are unlikely to bring the earlier trade marks to the mind of the average consumer.

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. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

Even assuming that the earlier marks enjoy reputation, the outcome remains the same. Therefore, it is not necessary to examine the evidence of reputation.

COSTS

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

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

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

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Vít MAHELKA

Lucinda CARNEY

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

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