kukka | Decision 2704347

Date Published: Sep 25, 2017

OPPOSITION No B 2 704 347

Ilidio Cruz, Lda, Via Carlos Mota Pinto, 30-BL, 4470-611 Maia, Portugal (opponent), represented by Gastão da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Concepcion Fernandez, celia cruz 10, 14014 Cordoba, Spain (applicant), represented by Maria del Carmen Ruiz Vazquez, Espinosa y Cárcel, 9-bajo, 41005 Sevilla, Spain (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 704 347 is partially upheld, namely for the following contested goods:

Class 18: Bags, wallets and other carriers; Wallets; Bags; Sling bags; Roll bags; Bags for sports; Belt bags and hip bags; Beach bags; Bags for sports clothing; Small bags for men; Hipsacks; Leather bags and wallets; Key bags; Pouches; Holdalls for sports clothing; Holdalls; Handbags; Canvas bags; Handbags made of imitations leather; Wrist mounted carryall bags; Shoulder bags; Boston bags; Handbags, purses and wallets; Pouch baby carriers; Purses made of precious metal; Wallets including card holders; Briefcases [leather goods]; School book bags; Leather credit card wallets; Clutches [purses]; Wallets of precious metal; Satchels; Keycases; Wallets for attachment to belts; Card wallets [leatherware]; Credit-card holders; Driving licence cases; Folio cases; Commutation-ticket holders; Key cases made of leather; Banknote holders; Wallets, not of precious metal; Credit card holders made of leather; Carrying cases for documents; Credit card cases [wallets]; Credit card holders made of imitation leather; Business card cases; Key-cases of leather and skins; Key cases of imitation leather; Attache cases; Portfolio cases [briefcases]; Business cases; Folding briefcases; Attache cases made of imitation leather; Briefcases and attache cases; Backpacks; Back frames for carrying children; Rucksacks on castors; Sports packs; Hiking rucksacks; Daypacks; Baby backpacks; Purses; Leather purses; Baby carriers worn on the body; Briefbags; Art portfolios [cases]; Holders in the nature of cases for keys; Bumbags; Card cases [notecases]; All-purpose athletic bags; Pouches for holding make-up, keys and other personal items; Towelling bags; Gentlemen’s handbags; Ladies’ handbags; Small clutch purses; Evening handbags; Waterproof bags; Multi-purpose purses; Coin holders; Coin purses, not of precious metal; Small purses; Small rucksacks; School knapsacks; Sling bags for carrying infants; Chain mesh purses; Wrist mounted purses.

2.        European Union trade mark application No 15 180 524 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 180 524. The opposition is based on European Union trade mark registration No 7 291 347. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 7 291 347.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 03/03/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 03/03/2011 to 02/03/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

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, shoes, headgear.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 24/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/10/2016 to submit evidence of use of the earlier trade mark. This time limit was extended and expired on 29/12/2016. On 23/12/2016, within the time limit, the opponent submitted evidence of use.

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 to be taken into account is the following:

• A brand evaluation report dated 15/12/2016 and prepared by Gastão Cunha Ferreira Intellectual Property Consultants, referring, inter alia, to the trade mark in question. It shows that the trade mark has been used in the footwear sector.
• A budget dated 18/05/2016 for a proposal for the design, preparation and disassembly of a 3D ‘KUSKA’ stand.
• A compulsory form and an application form to participate in ‘Expo Riva Schuh’ (international shoe fair) for ‘KUSKA JEANS’ dated May 2016.
• Photographs of ‘KUSKA’ stands.
• A picture of a shoe bearing the trade mark ‘KUSKA’.
• An application form to participate in ‘Expo RIVA Schuh’ in 2014.
• Pictures of goods, such as leather goods, bearing the trade mark ‘KUSKA’.
• Numerous invoices bearing figurative versions of the trade mark ‘KUSKA’ placed in the top right corner. They are issued by ‘EUROSTEP’ and addressed to different shoe stores in Belgium, Germany, Luxembourg, etc. Some of them are dated within the relevant period (in 2015 and many dated in the first quarter of 2016), some are dated outside the relevant period and some are undated.
• A set of invoices dated in 2010, 2011 and 2013 from ‘EUROSTEP, LDA’ to addressees in Belgium, France and Germany. The trade mark is nowhere shown and the nature of the goods is also not clearly indicated (descriptions of colours, e.g. ‘beige’ or ‘black’, are not enough to indicate the kind of goods).
• Numerous invoices, mostly undated, issued by ‘EUROSTEP Shoes’ to different addressees in Portugal with regard to ‘KUSKA JEANS’ or the trade mark ‘KUSKA’. Some of the invoices are dated on 13/12/2013.

The invoices show that the place of use is the European Union. This can be inferred from the language of the documents (Portuguese), the currency mentioned (euros) and some addresses in, inter alia, Portugal, Germany, France and Belgium. Therefore, the evidence relates to the relevant territory.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the brand evaluation report refers to the use of the trade mark within the period, and some of the invoices refer to or are dated very close in time to the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Even if some of the invoices cannot be taken into account, as either they do not relate to the relevant period or it is not certain to which goods and trade mark they refer, still many invoices refer to the sale of ‘KUSKA’ goods within the relevant period or at a time close to the relevant period. It can be deduced from the size scales and shop names that these invoices relate to shoes.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

Although the evidence indicates a relatively low commercial volume of use, it shows use of the EUTM in several Member States, namely Portugal, Germany, France and Belgium.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the signs shown in most of the submitted materials are the figurative signs ,  and . These graphical depictions are not of such a nature as to alter the distinctive character of the word mark in question. The word ‘KUSKA’ is clearly present in these signs, usually with the addition of the smaller descriptive word ‘JEANS’ or a large letter ‘K’, which is the first letter in the word ‘KUSKA’.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 25:        Shoes.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 and services

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

Class 25: Shoes.

The contested goods and services are the following:

Class 14: Time instruments; Jewellery boxes and watch boxes; Jewellery; Gemstones, pearls and precious metals, and imitations thereof; Chronometric instruments; Jewels; Ornaments [jewellery, jewelry (Am.)]; Imitation jewellery ornaments; Jewellery ornaments; Pins being jewelry; Decorative pins of precious metal; Tie pins; Jewelry pins for use on hats; Lapel pins [jewellery]; Decorative pins [jewellery]; Rings [jewellery] made of precious metal; Rings [jewellery] made of non-precious metal; Rings coated with precious metals; Gold plated rings; Gold rings; Agate as jewellery; Body-piercing rings; Jewellery coated with precious metal alloys; Articles of jewellery coated with precious metals; Articles of jewellery with ornamental stones; Articles of jewellery made of precious metal alloys; Semi-precious articles of bijouterie; Paste jewellery [costume jewelry (Am.)]; Trinkets coated with precious metal; Wooden bead bracelets; Bracelets; Brooches [jewelry]; Gold plated brooches [jewellery]; Jewellery rope chain for necklaces; Jewellery rope chain for bracelets; Jewellery rope chain for anklets; Jewellery chain of precious metal for necklaces; Jewellery chain of precious metal for anklets; Chains [jewelry]; Tie chains of precious metal; Jewellery chain of precious metal for bracelets; Jewel chains; Key chains as jewellery [trinkets or fobs]; Closures for necklaces; Clasps for jewelry; Pendants; Jewel pendants; Necklaces [jewellery, jewelry (Am.)]; Necklaces of precious metal; Gold necklaces; Crosses [jewellery]; Diadems; Decorative cuff link covers; Charms; Charms of precious metals; Decorative charms for cellular phones; Gemstones; Cuff links; Cuff links coated with precious metals; Cuff links of precious metal; Cuff links made of precious metals with precious stones; Cuff links made of gold; Cuff links and tie clips; Badges of precious metal; Gems; Sterling silver jewellery; Jewelry of yellow amber; Cloisonné jewellery [jewelry (Am.)]; Jewellery incorporating diamonds; Jewellery fashioned from non-precious metals; Jewellery incorporating precious stones; Jewellery made of crystal; Jewellery made of crystal coated with precious metals; Jade [jewellery]; Gold jewellery; Jewellery made from silver; Platinum jewelry; Women’s jewelry; Enamelled jewellery; Jewellery fashioned of cultured pearls; Jewellery fashioned of semi-precious stones; Jewellery made of semi-precious materials; Jewellery made of precious metals; Jewellery made of precious stones; Jewelry for the head; Jewellery, clocks and watches; Medals; Medals coated with precious metals; Medals made of precious metals; Lockets [jewellery, jewelry (Am.)]; Earrings; Gold plated earrings; Hoop earrings; Drop earrings; Ankle bracelets; Tie bars; Body-piercing studs; Rings [jewellery, jewelry (Am.)]; Signet rings; Bracelets and watches combined; Gold bracelets; Bracelets of precious metal; Friendship bracelets; Charity bracelets; Gold plated bracelets; Bracelets [jewellery, jewelry (Am.)]; Clips of silver [jewellery]; Precious stones; Pearls [jewellery, jewelry (Am.)]; Gold earrings; Earrings of precious metal; Synthetic stones [jewellery]; Chronometric apparatus and instruments; Apparatus for sports timing [stopwatches]; Horological articles; Watch clasps; Pendants for watch chains; Metal watch bands; Watch straps made of metal or leather or plastic; Non-leather watch straps; Chronographs [watches]; Chronographs for use as watches; Chronometers; Watch glasses; Watch straps of plastic; Watch straps of nylon; Watch straps of synthetic material; Watch straps of polyvinyl chloride; Timing clocks; Alarm clocks; Clock dials; Dials for clock and watch making; Cases for watches [presentation]; Buckles for watchstraps; Horological instruments made of gold; Horological instruments having quartz movements; Watch hands; Bracelets for watches; Watches made of rolled gold; Pocket watches; Quartz watches; Watches made of gold; Watches made of plated gold; Wristwatches with GPS apparatus; Wristwatches with pedometers; Wristwatches; Watches with the function of wireless communication; Watches made of precious metals or coated therewith; Women’s watches; Watches made of precious metals; Clocks and watches; Sundials; Dress watches; Sports watches; Digital clocks; Small clocks; Timekeeping systems for sports; Presentation boxes for horological articles; Presentation boxes for jewelry; Presentation boxes for watches; Jewelry boxes; Watch cases; Caskets for clocks and jewels; Cases [fitted] for horological articles; Jewel cases of precious metal; Cases for clock- and watchmaking; Cases for chronometric instruments; Cases for watches and clocks; Jewelry cases [caskets or boxes]; Leather jewelry boxes; Jewelry boxes of precious metal; Jewelry rolls; Jewelry boxes of metal; Wooden jewellery boxes; Stands for clocks; Ring holders of precious metal; Watch pouches; Fitted jewelry pouches; Jewelry organizer rolls for travel; Small jewellery boxes of precious metals; Jewelry boxes, not of precious metal; Jewelry boxes not of metal; Jewelry cases not of precious metal; Gold alloys; Unwrought silver alloys; Precious metal alloys [other than for use in dentistry]; Platinum alloys; Cubic zirconia; Beads for making jewelry; Diamonds; Diamond [unwrought]; Cut diamonds; Emeralds; Spinel [precious stones]; Precious and semi-precious gems; Threads of precious metals; Wire thread of precious metal; Agate [unwrought]; Agates; Chalcedony; Jet, unwrought or semi-wrought; Opal; Threads of precious metal [jewellery, jewelry (Am.)]; Precious metals; Olivine [gems]; Gold; Imitation gold; Gold, unwrought or beaten; Osmium and its alloys; Palladium and its alloys; Ruthenium and its alloys; Rhodium and its alloys; Platinum and its alloys; Silver and its alloys; Silver, unwrought or beaten; Silver; Unwrought silver; Semi-precious stones; Synthetic precious stones; Natural gem stones; Unwrought and semi-wrought precious stones and their imitations; Artificial stones [precious or semi-precious]; Imitation pearls; Pearls made of ambroid [pressed amber]; Cultured pearls; Pearl; Topaz; Sapphires.

Class 18: Luggage, bags, wallets and other carriers; Umbrellas and parasols; Shoulder belts [straps] of leather; Trunks [luggage]; Traveling trunks; Trunks and suitcases; Wallets; Bags; Sling bags; Roll bags; Garment bags for travel made of leather; Bags for sports; Belt bags and hip bags; Beach bags; Toiletry bags; Nappy bags; Bags for sports clothing; Small bags for men; Hipsacks; Leather bags and wallets; Key bags; Pouches; Holdalls for sports clothing; Holdalls; Handbags; Travelling handbags; Canvas bags; Handbags made of imitations leather; Wrist mounted carryall bags; Flight bags; Shoulder bags; Boston bags; Handbags, purses and wallets; Pouch baby carriers; Purses made of precious metal; Wallets including card holders; Briefcases [leather goods]; School book bags; Leather credit card wallets; Clutches [purses]; Wallets of precious metal; Satchels; Keycases; Wallets for attachment to belts; Card wallets [leatherware]; Credit-card holders; Driving licence cases; Folio cases; Commutation-ticket holders; Travel garment covers; Key cases made of leather; Banknote holders; Wallets, not of precious metal; Travel baggage; Luggage; Credit card holders made of leather; Travel cases; Vanity cases sold empty; Carrying cases for documents; Credit card cases [wallets]; Credit card holders made of imitation leather; Business card cases; Key-cases of leather and skins; Key cases of imitation leather; Valises; Pullmans; Leather suitcases; Travelling bags made of imitation leather; Suitcases; Portmanteaus; Carrying cases; Gladstone bags; Attache cases; Portfolio cases [briefcases]; Business cases; Folding briefcases; Attache cases made of imitation leather; Briefcases and attache cases; Backpacks; Back frames for carrying children; Rucksacks on castors; Sports packs; Hiking rucksacks; Daypacks; Baby backpacks; Purses; Leather purses; Cosmetic purses; Baby carriers worn on the body; Briefbags; Art portfolios [cases]; Holders in the nature of cases for keys; Carriers for suits, shirts and dresses; Bumbags; Travelling sets; Hat boxes for travel; Card cases [notecases]; Umbrellas; Umbrellas for children; Parasols; Beach umbrellas [beach parasols]; Rainproof parasols; Patio umbrellas; Animal skins; Worked or semi-worked hides and other leather; Boxes made of leather; Girths of leather; Shopping bags with wheels attached; All-purpose athletic bags; Pouches for holding make-up, keys and other personal items; Towelling bags; Shoe bags for travel; Gentlemen’s handbags; Ladies’ handbags; Small clutch purses; Evening handbags; Shaving bags sold empty; Waterproof bags; Multi-purpose purses; Cosmetic cases sold empty; Tie cases; Vanity cases, not fitted; Small suitcases; Coin holders; Coin purses, not of precious metal; Small purses; Small rucksacks; School knapsacks; Sling bags for carrying infants; Chain mesh purses; Wrist mounted purses.

Class 35: Advertising, marketing and promotional services; Advertising; Distribution of advertising, marketing and promotional material; Trade show and exhibition services; Product demonstrations and product display services; Dissemination of advertisements; Dissemination of advertising matter; Dissemination of advertising, marketing and publicity materials; Dissemination of advertising material [leaflets, brochure and printed matter]; Handbill distribution; Distribution of printed promotional material by post; Distribution of advertising material; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Distribution of advertising material by post; Distribution of samples for publicity purposes; Distribution of products for advertising purposes; Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; Advertising by mail order; Street dissemination of advertising materials; Arranging the distribution of advertising samples; Promoting the goods and services of others through the distribution of discount cards; Promotion of fairs for trade purposes; Arranging and conducting trade shows; Advisory services for business management; Business administration; Presentation of goods on communication media, for retail purposes; Provision of advertising space, time and media; Arranging of displays for commercial purposes; Arranging of displays for advertising purposes; Organisation and conducting of product presentations; Retail shop window display arrangement services; Shop window dressing; Demonstration of goods; Advertising and marketing; Promotion [advertising] of business; Business promotion; Modelling for advertising or sales promotion; Retail services in relation to jewellery; Retail services in relation to clothing; Administration of the business affairs of franchises; Business management advisory services relating to franchising; Business assistance relating to franchising; Advisory services (Business -) relating to the establishment of franchises; Business promotion services provided by telephone; Arranging of trade fairs; Conducting of trade shows; Arranging and conducting of fairs and exhibitions for advertising purposes; Demonstration of goods for promotional purposes; Market campaigns; Product marketing; Event marketing; Promotional marketing; Organization of exhibitions for commercial or advertising purposes; Organisation of exhibitions and trade fairs for business and promotional purposes; Wholesale services in relation to jewellery.

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 14

All the contested goods in this class, consisting of jewellery, jewellery cases, timepieces and precious metals and precious stones, are considered dissimilar to the opponent’s shoes in Class 25. Their natures and main purposes are different. The main purpose of shoes is to dress the human body, whereas jewels and timepieces are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell fashion accessories (such as jewellery and watches), this is not the rule; it tends to apply only to (commercially) successful designers. The contested precious metals and stones are, moreover, raw materials and they have different suppliers and target a different public.

Contested goods in Class 18

The opponent’s shoes in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested bags, wallets and other carriers; wallets; Bags; sling bags; roll bags; bags for sports; belt bags and hip bags; beach bags; bags for sports clothing; small bags for men; hipsacks; leather bags and wallets; key bags; pouches; holdalls for sports clothing; holdalls; handbags; canvas bags; handbags made of imitations leather; wrist mounted carryall bags; shoulder bags; Boston bags; handbags, purses and wallets; purses made of precious metal; wallets including card holders; briefcases [leather goods]; school book bags; leather credit card wallets; clutches [purses]; wallets of precious metal; satchels; keycases; wallets for attachment to belts; card wallets [leatherware]; credit-card holders; driving licence cases; folio cases; commutation-ticket holders; key cases made of leather; banknote holders; wallets, not of precious metal; credit card holders made of leather; carrying cases for documents; credit card cases [wallets]; credit card holders made of imitation leather; business card cases; key-cases of leather and skins; key cases of imitation leather; attache cases; portfolio cases [briefcases]; business cases; folding briefcases; attache cases made of imitation leather; briefcases and attache cases; backpacks; rucksacks on castors; sports packs; hiking rucksacks; daypacks; purses; leather purses; briefbags; art portfolios [cases]; holders in the nature of cases for keys; bumbags; card cases [notecases]; all-purpose athletic bags; pouches for holding make-up, keys and other personal items; towelling bags; gentlemen’s handbags; ladies’ handbags; small clutch purses; evening handbags; waterproof bags; multi-purpose purses; coin holders; coin purses, not of precious metal; small purses; small rucksacks; school knapsacks; chain mesh purses; wrist mounted purses are related to shoes in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement shoes, as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of shoes to directly produce and market related goods made of leather and imitations of leather such as the abovementioned contested goods. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The contested pouch baby carriers: baby carriers worn on the body; sling bags for carrying infants; back frames for carrying children; baby backpacks are similar to a low degree to the opponent’s shoes, as they coincide in producer and distribution channels. They also target the same public.

The contested animal skins; worked or semi-worked hides and other leather in Class 18 are raw materials. The fact that one product is used for manufacturing another (for example, leather for shoes) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from shoes. Therefore, these goods are dissimilar.

The contested trunks [luggage]; trunks and suitcases; traveling trunks are large packing cases or boxes that clasp shut, used as luggage or for storage; travelling bags; garment bags for travel made of leather; travelling handbags; flight bags; travel garment covers; travel baggage; luggage; travel cases; valises; pullmans; portmanteaus; leather suitcases; travelling bags made of imitation leather; suitcases; carrying cases; Gladstone bags; carriers for suits, shirts and dresses; travelling sets; hat boxes for travel; shoe bags for travel; small suitcases are for carrying things when travelling and do not satisfy the same needs as shoes. Umbrellas, patio umbrellas; umbrellas for children; beach umbrellas [beach parasols]; rainproof parasols are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun. Girths of leather are equipment for horses. Toiletry bags; nappy bags; boxes made of leather; vanity cases, not fitted; vanity cases sold empty; cosmetic purses; cosmetic cases sold empty; tie cases; shaving bags sold empty are containers for storing goods. The nature of these goods is very different from that of shoes in Class 25. They serve very different purposes (storage, protection from rain/sun, riding of horses versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. Therefore, these goods are considered dissimilar to the opponent’s goods.

The contested shoulder belts [straps] of leather; shopping bags with wheels attached and the opponent’s shoes have nothing relevant in common, as they have clearly different natures, purposes and target consumers and, therefore, are unlikely to be provided by the same undertakings. They are also not in competition with each other or complementary. Consequently, these goods are dissimilar.

Contested services in Class 35

The contested advertising, marketing and promotional services; advertising; distribution of advertising, marketing and promotional material; trade show and exhibition services; product demonstrations and product display services; dissemination of advertisements; dissemination of advertising matter; dissemination of advertising, marketing and publicity materials; dissemination of advertising material [leaflets, brochure and printed matter]; handbill distribution; distribution of printed promotional material by post; distribution of advertising material; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; distribution of advertising material by post; distribution of samples for publicity purposes; distribution of products for advertising purposes; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; advertising by mail order; street dissemination of advertising materials; arranging the distribution of advertising samples; promoting the goods and services of others through the distribution of discount cards; promotion of fairs for trade purposes; arranging and conducting trade shows; advisory services for business management; presentation of goods on communication media, for retail purposes; provision of advertising space, time and media; arranging of displays for commercial purposes; arranging of displays for advertising purposes; organisation and conducting of product presentations; advertising and marketing; promotion [advertising] of business; business promotion; modelling for advertising or sales promotion; business promotion services provided by telephone; arranging of trade fairs; conducting of trade shows; arranging and conducting of fairs and exhibitions for advertising purposes; demonstration of goods for promotional purposes; market campaigns; product marketing; event marketing; promotional marketing; organization of exhibitions for commercial or advertising purposes; organisation of exhibitions and trade fairs for business and promotional purposes all relate to advertising and promotion activities and as such they consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that the opponent’s goods may appear in advertisements is insufficient for finding similarity. Therefore, these services are dissimilar to the goods being advertised.

The opponent’s retail services in relation to jewellery; retail services in relation to clothing and the opponent’s shoes are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

By analogy, the same rule applies to wholesale services. Therefore, the contested wholesale services in relation to jewellery are also considered dissimilar to the opponent’s goods.

The remaining services, business administration; retail shop window display arrangement services; shop window dressing; demonstration of goods; administration of the business affairs of franchises; business management advisory services relating to franchising; business assistance relating to franchising; advisory services (business -) relating to the establishment of franchises, have no direct links with the opponent’s shoes in Class 25. These goods and services, apart from being different in nature, also serve different purposes and have different methods of use. They are neither in competition nor complementary. They target different publics, have different distribution channels and usually do not have the same commercial origin. They are clearly dissimilar.

2. Relevant public — degree of attention

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

In the present case, the goods found to be similar to varying degrees are directed at the public at large.

The degree of attention is average.

3. The signs

KUSKA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs are not meaningful in certain territories, for example in those countries where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier sign is a word mark, ‘KUSKA’. In the case of word marks, it is irrelevant whether they are in upper or lower case letters, since the word as such is protected and not its written form.

The contested sign is figurative and is composed of the word ‘KUKKA’ in lower case characters, of which all the letters ‘K’ have a vertical stroke greatly extended upwards. In addition, the middle letter ‘K’ is a mirror reflection of the subsequent letter ‘K’. On the right of the verbal element there is a much smaller figurative element resembling a flower.

The earlier mark, ‘KUSKA’, and the verbal element ‘KUKKA’ of the contested sign have no meanings for the relevant public and are, therefore, distinctive.

As regards the contested sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature, which can be perceived as a flower. Therefore, the verbal element is more distinctive than the figurative element.

The element ‘KUKKA’ in the contested sign is the dominant element as it is the most eye-catching due to its bold outline and size.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in ‘KU*KA’. However, they differ in letter ‘S’ placed in the middle of the earlier sign and the additional ‘K’ in the contested sign as well as in the graphic depiction of the contested sign and its figurative element.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KU*KA’, present identically in both signs. The pronunciation differs in the sound of the letter ‛S’ of the earlier sign. The additional letter ‘K’ will not be pronounced by the relevant English-speaking public. The signs are both composed of two syllables, ‘KUS-KA’ and ‘KU-KA’. They also have the same vowels in the same places and thus have the same rhythm and intonation.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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

Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the goods that have been found partly similar to varying degrees and partly dissimilar target the public at large.

The signs are aurally similar to a high degree and visually they are similar to an average degree, as, on the one hand, they differ merely in a single letter placed in the middle of the signs and, on the other hand, the graphical depiction of the contested sign will not be given trade mark significance.

Therefore, for the contested goods that are similar to varying degrees to the goods covered by the earlier mark, it is likely that average consumers, relying on their imperfect recollection of the earlier mark, will confuse the contested sign with it.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

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

The Opposition Division

Anna BAKALARZ

Katarzyna ZANIECKA

Frédérique SULPICE

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.