NXTBIGTHING | Decision 2460833 - Next Retail Limited v. Silvino Santo
Date Published: Sep 25, 2017
OPPOSITION No B 2 460 833
Next Retail Limited, Desford Road, Enderby, Leicester, Leicestershire LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London WC2E 9RA, United Kingdom (professional representative)
a g a i n s t
Silvino Santo, 13 Rua Vasco da Gama, 2480 Porto De Mos, Portugal (applicant).
On 14/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 460 833 is upheld for all the contested goods and services, namely
Class 25: Clothing, namely, blouses, boots, bras, caps, coats, corsets, dresses, footwear, gowns, hats, headgear, namely, hats, caps, beanies, headbands, sweatbands, insoles, jackets, pajamas, pants, scarves, robes, shawls, shirts, shoes, shorts, skirts, socks, sweaters, sweatshirts, t-shirts, tank tops, tube tops, underwear, uniforms, vests.
Class 35: Retail store services and online retail store services featuring clothing, namely, blouses, boots, bras, caps, coats, corsets, dresses, footwear, gowns, hats, headgear, insoles, jackets, pajamas, pants, scarves, robes, shawls, shirts, shoes, shorts, skirts, socks, sweaters, sweatshirts, t-shirts, tank tops, tube tops, underwear, uniforms, vests, namely, fleece vests, wind vests, wind-resistant vests, long sleeved vests, as well as handbags and purses.
2. European Union trade mark application No 13 195 581 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 195 581 for the word mark ‘NXTBIGTHING’, namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 15 594 and No 1 620 434, both protected for the word mark ‘NEXT’. The opponent invoked Article 8(1)(b), Article 8(1)(b) in conjunction with Article 8(2)(c), Article 8(5) and Article 8(4) 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 mark registrations No 15 594 and No 1 620 434.
- The goods and services
The goods and services on which the opposition is based are the following:
Earlier EUTM No. 15 594:
Class 25: Articles of clothing; footwear; headgear.
Earlier EUTM No. 1 620 434:
Class 35: Retail services in the fields of clothing, headgear and footwear, fashion accessories, carrying cases, handbags and all manner of bags; the bringing together for the benefit of others of a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the Internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; on-line trading services, trading services in respect of a wide range of goods; excluding modelling agency services.
The contested goods and services are the following:
Class 25: Clothing, namely, blouses, boots, bras, caps, coats, corsets, dresses, footwear, gowns, hats, headgear, namely, hats, caps, beanies, headbands, sweatbands, insoles, jackets, pajamas, pants, scarves, robes, shawls, shirts, shoes, shorts, skirts, socks, sweaters, sweatshirts, t-shirts, tank tops, tube tops, underwear, uniforms, vests.
Class 35: Retail store services and online retail store services featuring clothing, namely, blouses, boots, bras, caps, coats, corsets, dresses, footwear, gowns, hats, headgear, insoles, jackets, pajamas, pants, scarves, robes, shawls, shirts, shoes, shorts, skirts, socks, sweaters, sweatshirts, t-shirts, tank tops, tube tops, underwear, uniforms, vests, namely, fleece vests, wind vests, wind-resistant vests, long sleeved vests, as well as handbags and purses.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
Contested goods
The contested clothing, namely, blouses, boots, bras, caps, coats, corsets, dresses, footwear, gowns, hats, headgear, namely, hats, caps, beanies, headbands, sweatbands, jackets, pajamas, pants, scarves, robes, shawls, shirts, shoes, shorts, skirts, socks, sweaters, sweatshirts, t-shirts, tank tops, tube tops, underwear, uniforms, vests are included in the broad category of the opponent’s articles of clothing; footwear; headgear. Therefore, they are identical.
The contested clothing, namely, insoles are similar to the opponent’s footwear as they can coincide in producers, end users and distribution channels. Furthermore they are complementary.
Contested services
Retail store services and online retail store services are included in the broad category of retail services. The applicant’s retailed goods clothing, namely, blouses, bras, coats, corsets, dresses, gowns, jackets, pajamas, pants, scarves, robes, shawls, shirts, shorts, skirts, socks, sweaters, sweatshirts, t-shirts, tank tops, tube tops, underwear, uniforms, vests, namely, fleece vests, wind vests, wind-resistant vests, long sleeved vests are included in the broad category of clothing and the applicant’s retailed footwear is identical to the opponent’s retailed footwear and the applicant’s retailed shoes, boots are included in the broad category of footwear. In addition, the applicant’s retailed caps, hats are included in the broad category of headgear and the retailed headgear is identical to headgear. Furthermore, the applicant’s retailed goods handbags and purses are included in the broad category of all manner of bags. Therefore, the contested Retail store services and online retail store services featuring clothing, namely, blouses, boots, bras, caps, coats, corsets, dresses, footwear, gowns, hats, headgear, jackets, pajamas, pants, scarves, robes, shawls, shirts, shoes, shorts, skirts, socks, sweaters, sweatshirts, t-shirts, tank tops, tube tops, underwear, uniforms, vests, namely, fleece vests, wind vests, wind-resistant vests, long sleeved vests, as well as handbags and purses are identical to the opponent’s retail services in the fields of clothing, headgear and footwear and all manner of bags.
Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may coincide in relevant public and distribution channels, in which case they must be considered highly similar. The applicant’s retailed goods insoles are commonly retailed in footwear shops. Consequently, they coincide in the relevant public and distribution channels with the earlier retail services in the fields of footwear. Therefore, the contested retail store services and online retail store services featuring clothing, namely, insoles are considered highly similar to the earlier retail services in the fields of footwear.
- 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 and services found to be identical, highly similar and similar are directed at the public at large with an average degree of attention.
- The signs
NEXT | NXTBIGTHING |
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).
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). 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 both signs have a meaning for the English-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, Malta and the United Kingdom.
The earlier mark will be understood as ‘being the first one after the present one or after the just one mentioned, or being the first after the present moment’ (Cambridge Dictionaries Online)’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
The element ‘NXT’ of the contested sign will be associated with the word ‘next’ since it is a common abbreviation for ‘next’. The contested sign as a whole has the meaning of the ‘next popular thing’.
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 the letters ‘N*XT’. However, they differ in the letter ‘E’ of the earlier mark and the letters ‘BIGTHING’ of the contested sign. Since the signs coincide in their beginnings the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the first syllable ‘NEXT’, present identically in the earlier signs and the contested mark and differs in the syllables ‘BIG-THING’ of the contested sign. Since the earlier marks are entirely included in the contested sign 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. Although with slightly different connotations, the concept of ‘next’ is present in the earlier marks and in the contested sign. Therefore, the signs are conceptually similar to an average degree.
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 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.
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’).
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Account is 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).
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).
In the present case the contested goods and services are identical, highly similar and similar. Furthermore, the signs are visually, aurally and conceptually similar to an average degree, the level of attention is average and the distinctiveness of the earlier mark must be seen as normal.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or, a variation of the earlier marks.
Considering all the above, there is a likelihood of confusion on the part of the public.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 15 594 and No 1 620 434. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is 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 or reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
As the earlier rights European Union trade mark registrations No 15 594 and No 1 620 434, lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(b) in conjunction with Article 8(2)(c), Article 8(5) and Article 8(4) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Peter QUAY | Martin EBERL | Sigrid DICKMANNS |
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.