SHIRLIN GREEN | Decision 2740846

Date Published: Oct 1, 2017

OPPOSITION No B 2 740 846

Paul Green GmbH, Haag 10, 5163 Mattsee, Austria (opponent), represented by Rospatt Osten Pross Intellectual Property Rechtsanwälte Partnerschaftsgesellschaft MBB, Kaiser-Friedrich-Ring 56, 40547 Düsseldorf, Germany (professional representative)

a g a i n s t

Shenzhen Jia Man Li Trading Co. Ltd., 13D Unit 2, Building 6, Minzhi Bishuilongting, Minzhi Street, Longhua New District, Shenzhen, Guangdong,  People's Republic of China (applicant), represented by Oficina Ponti SLP, Consell de Cent, 322, 08007 Barcelona, Spain  (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 740 846 is partially upheld, namely for the following contested goods:

Class 25:  Clothing; trousers; outerclothing; skirts; children's clothing; layettes [clothing]; bathing trunks; swimsuits; non-slipping devices for footwear; footwear; boots; headgear for wear; sports headgear [other than helmets]; hosiery; panty hose; gloves [clothing]; neck scarfs [mufflers]; shawls; neckties; scarfs; mantillas; wedding dresses.

2.        European Union trade mark application No 15 350 556 is rejected for all the above goods It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 350 556 namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 40 147. The opponent invoked Article 8(1)(b), 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:

Class 25: Footwear.

The contested goods are the following:

Class 25: Underwear; clothing; trousers; outerclothing; skirts; underpants; children's clothing; layettes [clothing]; bathing trunks; swimsuits; non-slipping devices for footwear; footwear; boots; headgear for wear; sports headgear [other than helmets]; hosiery; panty hose; gloves [clothing]; neck scarfs [mufflers]; shawls; neckties; scarfs; mantillas; wedding dresses.

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.

The contested footwear  are identically contained in both lists of goods.

The contested boots are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested clothing; trousers; outerclothing; skirts; children's clothing; layettes [clothing]; bathing trunks; swimsuits; headgear for wear; sports headgear [other than helmets]; hosiery; panty hose; gloves [clothing]; neck scarfs [mufflers]; shawls; neckties; scarfs; mantillas; wedding dresses are similar to the opponent’s Footwear. They serve the same purpose as both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets.  Moreover, they coincide in manufacturers.

The contested non-slipping devices for footwear are similar to a low degree to the opponent’s goods. They can coincide in distribution channels and relevant public. Furthermore, they are complementary.

The contested underwear; underpants are dissimilar to the opponent’s goods. They have a different nature. Furthermore, they have different distribution channels and commercial origin and they are neither complementary nor in completion.

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 identical and similar to various degrees are directed at the public at large.

The degree of attention is considered to be average.  

3. The signs

PAUL GREEN
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 common element  ‘GREEN’ will be seen as a family name and  the element ‘PAUL’ of  the earlier mark will be seen as a masculine given name and ‘SHIRLIN’ of the contested sign will be seen as a female name by a part of the relevant public.  The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

In the case of word marks, as is the earlier mark, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The element ‘PAUL’ of the earlier mark will be perceived as a common male given name of English origin by the relevant public. The element ‘SHIRLIN’ will be perceived by at least a part of the relevant public as a female name of English origin. The common element ‘GREEN’ will be seen as a family name of English origin by at least a part of the relevant public. As they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

The Opposition Division will proceed on the basis of the relevant public that will perceive ‘SHIRLIN’ as a name and ‘GREEN’ as a family name.

Surnames have a higher intrinsic value than first names as indicators of the origin of goods or services. Therefore, family names generally have a higher degree of distinctiveness.

The stylisation of the contested sign is purely decorative. The mark has no dominant elements.

Visually, the signs coincide in ‘GREEN’. However, they differ in ‘PAUL’ of the earlier mark and ‘Shirlin’ and the stylisation of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GREEN’, present in both signs. The pronunciation differs in the sound of the letters ‛ PAUL’ of the earlier mark and ‘Shirlin’ of the contested sign.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 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

The goods are partly identical, partly similar to various degrees and partly dissimilar.

The marks are visually, aurally and conceptually similar to an average degree, owning to the presence of the surname ‘GREEN’ present in both marks and is clearly identified as a separate element which retains an independent distinctive role.

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).

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, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case these can be two different clothing lines, one for female customers and the other for male customers.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration No 40 147. 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 identical or similar to various degrees   to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar the opponent did not submit any facts, arguments or evidence that could support the conclusion that 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.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

 Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Francesca CANGERI SERRANO

Erkki MÜNTER

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.