SEASIDE | Decision 2721481
Date Published: Sep 28, 2017
OPPOSITION No B 2 721 481
Sopropé – Organizações de Calçado, S.A., Avenida Severiano Falcão, Lote 8, Edifício Seaside Center, 2685-380 Prior Velho, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Frinsa del Noroeste, Avda. Ramiro Carregal Rey, parcela 29 – Polig.ind. de Xarás, 15960 Santa Eugenia de Ribeira (A Coruña), Spain (applicant), represented by Tavira y Botella, Velázquez 80 - 4º Izda., 28001 Madrid, Spain (professional representative).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 721 481 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 15 180 276. The opposition is based on European Union trade mark registration No 11 357 423. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
Earlier trade mark | Contested sign |
Preliminary remark
In the notice of opposition, the opponent refers only to the reputation of the earlier mark under Article 8(5) EUTMR and does not make any reference to likelihood of confusion under Article 8(1)(b) EUTMR. This ground is, however, mentioned in the opponent’s observations of 22/06/2016 (the same day the opposition notice was filed), which were submitted within the three-month opposition period in accordance with Article 41(1) EUTMR.
Therefore, the Opposition Division will examine likelihood of confusion under Article 8(1)(b) EUTMR first and then examine the reputation of the earlier mark under Article 8(5) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 14: Jewellery.
Class 18: Leather and leather imitation goods, namely bags, cases, wallet, purses, travelling bags, umbrellas, parasols.
Class 25: Clothing, footwear, belts (clothing), scarves and headgear.
Class 35: Sales promotion, for others, namely of jewellery and horoligical instruments, goods of leather and imitations of leather, namely bags, cases, wallets, purses, travelling bags, umbrellas, parasols, clothing, footwear, headgear, belts (clothing), scarves.
The contested goods are the following:
Class 29: Fish and shellfish preserves.
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 29
The contested fish and shellfish preserves are processed foodstuffs for human consumption. The opponent’s goods and services are mainly jewellery (Class 14), leather and leather imitation goods, umbrellas, parasols, etc. (Class18), clothing, footwear, belts (clothing), scarves and headgear (Class 25) and the sales promotion of these goods (Class 35). The goods and services under comparison have different natures and purposes. They target different publics through different distribution channels. They are neither in competition with nor complementary to each other. Moreover, they are not manufactured and/or provided by the same undertakings. Consequently, the contested goods in Class 29 are dissimilar to all the opponent’s goods and services in Classes 14, 18, 25 and 35.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
For these reasons, the opponent’s argument that there is a likelihood of confusion between the marks under comparison based on Article 8(1)(b) EUTMR must be set aside as unfounded.
This finding would still be valid even if the earlier trade mark were considered to enjoy a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
REPUTATION – ARTICLE 8(5) EUTMR
The opponent claims reputation for earlier European Union trade mark registration No 11 357 423 in Portugal.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in Portugal.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 03/03/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Portugal prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely footwear in Class 25.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 22/06/2016, the opponent submitted the following evidence:
- A printout from the website www.nit.pt (one page) showing information (published on 23/03/2006) regarding the opening of a new shop, ‘Seaside’, in Portugal, and the recent opening of another shop under the same name. Moreover, reference is made to the presence of ‘dozens of shops’ named ‘Seaside’ in Portugal and to the specialisation of the ‘Seaside’ trade mark in the field of footwear and accessories for 25 years.
- A printout from the website www.auralight.pt (two pages) regarding a change of image of these same ‘Seaside’ shops in Portugal (Lisbon) through a new lighting solution proposed by the company Aurora Light. In this extract, reference is made to the sign ‘Seaside’ as a ‘Portuguese brand operating internationally’ in the field of footwear and accessories for 25 years, the units sold per year in seven countries (4 000 000 units, although the countries and the kind of products sold are not specified), the number of employees (500 employees, although the territories where they are employed are not specified) and the number of shops (a chain of 80 shops, although where these shops are located is not specified).
- Two photographs of a shop showing the sign ‘Seaside’ (two pages).
- The results of a Google search for the word ‘Seaside’.
The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.
Although the two website printouts and the results of a Google search for the word ‘Seaside’ provide some information about the field of activity in which the opponent uses the trade mark (footwear and accessories), the number of employees, the number of shops in Portugal (dozens of shops), etc., the value of these documents is limited, since they are only printouts and search results from the internet and are not supported by any further material. In fact, the opponent did not submit any invoices, catalogues, sales figures or advertisements in order to indicate sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. The opponent contends that it has ‘dozens of Seaside shops’ in Portugal (www.nit.pt) but it does not offer the exact figure and even if they were a significant number, this information in itself does not demonstrate the degree of recognition of the mark by the relevant public.
Finally, the remaining material, namely two photographs of a shop showing the sign ‘Seaside’, is irrelevant, since, despite demonstrating some use of the trade mark, it does not contain any information regarding the territorial extent, the intensity or the time of use of the trade mark.
It is clear that the evidence filed by the opponent lacks objective data relating to sales and advertising figures, provides no indication of market share and provides no information on the degree of recognition of the earlier mark by the public.
Therefore, the Opposition Division concludes that the opponent failed to prove that its trade mark has reputation for the goods in relation to which reputation was claimed.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
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 Belén IBARRA DE DIEGO | Angela DI BLASIO | Francesca CANGERI SERRANO |
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.