THE SUSTAINABLE THREAD | Decision 2736505
Date Published: Oct 1, 2017
OPPOSITION No B 2 736 505
Eco Age Limited, Gemini House 334-336 King Street, Hammersmith, London W6 0RR, United Kingdom (opponent), represented by Venner Shipley LLP, 200 Aldersgate, London EC1A 4HD, United Kingdom (professional representative)
a g a i n s t
Hemtex AB, P.O. Box 495, 501 13 Borås, Sweden (applicant), represented by Nihlmark & Zacharoff Advokatbyrå AB, Regeringsgatan 67 4 TR, Stockholm, Sweden (professional representative).
On 28/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 736 505 is partially upheld, namely for the following contested goods and services:
Class 24: Textiles and textile goods, not included in other classes.
Class 25: Clothing, footwear, headgear.
Class 35: Advertising and marketing; Business analysis, business research and business information; Retailing of bleaching preparations and other substances for laundry use, cleaning preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, furniture, mirrors, picture frames, furnishings, containers, and closures and holders therefor, displays, stands and signage, statues, figurines, works of art, ornaments and decorations, ladders and movable steps, locks and keys, door, gate and window fittings, valves and fasteners of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum or substitutes for all these materials, or of plastics, household or kitchen utensils and containers (not of precious metals or coated therewith), combs and sponges, brushes (except paintbrushes), articles for cleaning purposes, unworked or semi -worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, bed clothes and table covers (not of paper), clothing, footwear, headgear, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), toys; Marketing, information relating to retailing.
2. European Union trade mark application No 15 089 709 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 089 709 for the figurative mark , namely against all the goods and services in Classes 24, 25 and 42, and some of the services in Class 35. The opposition is based on European Union trade mark registration No 13 418 843 for the word mark ‘THE GREEN THREAD’. The opponent invoked Article 8(1)(b) 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 9: Sunglasses, spectacles, spectacle frames and fitted cases for spectacles and sunglasses; parts and fittings for all the aforesaid goods.
Class 14: Jewellery, precious stones; horological and chronometric instruments; paste, imitation, fashion, artificial and costume jewels and jewellery; semi-precious stones; decorative articles (trinkets or jewellery) for personal use; jewellery cases; parts and fitting for all the aforesaid goods.
Class 18: Leather and imitations of leather; trunks, cases and bags; travelling bags, handbags and sports bags; purses, wallets; umbrellas, parasols and walking sticks; parts and fittings for all the aforesaid goods.
Class 25: Clothing, footwear, headwear.
Class 35: Business consultancy, advisory, information and research services; Business consultancy, advisory, information and research services relating to sustainability, renewable energy, energy infrastructure, carbon offsetting and carbon emissions; preparation of business reports; preparation of business reports relating to corporate responsibility; business advice relating to environmental management systems; procurement services for others [purchasing goods and services for other businesses]; promoting public awareness of environmental and sustainability issues and initiatives; the bringing together, for the benefit of others, of a variety of clothing, jewellery, bags, umbrellas, sunglasses, enabling customers conveniently to view and purchase such goods from a clothing or clothing accessories products catalogue or a general merchandise catalogue, via mail order, or via means of telecommunications; the bringing together, for the benefit of others, of a variety of clothing accessories, jewellery, bags, umbrellas, sunglasses, enabling customers conveniently to view and purchase such goods in a department or retail store; and the bringing together for the benefit of others of a variety of clothing, jewellery, bags umbrellas, sunglasses, enabling customers conveniently to view and purchase such goods from a general merchandise Internet site.
Class 41: Organising and operating talent shows and fashion shows; arranging talent contests and beauty contests; organisation and production of fashion shows; fashion show services; information, advice and assistance relating to all the aforesaid.
Class 45: Rental and hire of clothing, footwear and headgear, and of accessories; reservation, information, advice and assistance relating to all the aforesaid.
The contested goods and services are the following:
Class 24: Textiles and textile goods, not included in other classes; Bed and table covers (not of paper).
Class 25: Clothing, footwear, headgear.
Class 35: Advertising and marketing; Business analysis, business research and business information; Retailing of bleaching preparations and other substances for laundry use, cleaning preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, furniture, mirrors, picture frames, furnishings, containers, and closures and holders therefor, displays, stands and signage, statues, figurines, works of art, ornaments and decorations, ladders and movable steps, locks and keys, door, gate and window fittings, valves and fasteners of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum or substitutes for all these materials, or of plastics, household or kitchen utensils and containers (not of precious metals or coated therewith), combs and sponges, brushes (except paintbrushes), articles for cleaning purposes, unworked or semi -worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, bed clothes and table covers (not of paper), clothing, footwear, headgear, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), toys; Marketing, information relating to retailing.
Class 42: Design of furnishings, and consultancy relating thereto, design information.
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 24
The contested textiles and textile goods, not included in other classes include a broad range of fabrics being textile goods in roll form and textile piece goods. They are used in the confection of goods, for example in the fashion industry, manufacture of furniture etc. To that extent they have the same purpose and can be in competition with the opponent’s leather and imitations of leather in Class 18. They are directed at the same relevant public. Therefore, these goods are similar.
However the contested bed and table covers (not of paper) have nothing relevant in common with any of the opponent’s goods or services. These contested goods include kitchen and table linen, bed linen and blankets, all being finished articles, as opposed to the raw and semi-finished materials discussed in the previous paragraph. The earlier mark has protection for various fashion articles, ranging from spectacles, jewellery, watches, accessories thereof, garments, footwear, business support services, retailing, organisation of contests and shows, and rental of fashion articles. Clearly different by natures, these goods and services have different purposes and distribution channels from those of the contested household linen.
The opponent argues that fashion designers commonly expand their brands to the household textile branch, and submits some printouts from the internet for supporting this claim. In that regard, it has to be borne in mind that such brand extension is rather an exception and not the general rule. Bed and table covers are used for practical reasons (keeping one warm at night, protecting the bed from dust, protecting the table surface from dirt and wear etc.) and as decorative articles (bedroom or dining room décor etc.). The usual distribution channels for such goods are interior design supplies shops. Even though these goods are directed at the same public that purchases the opponent’s fashion articles this factor in itself is insufficient for a finding of similarity. The goods or services are not complementary or interchangeable either.
As regards the opponent’s retail services concerning a variety of clothing, jewellery, bags, umbrellas, sunglasses in Class 35, they are not similar to the contested bed and table covers (not of paper). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services allow 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.
Therefore, the contested bed and table covers (not of paper) are dissimilar to all of the opponent’s goods and services in Classes 9, 14, 18, 25, 35, 41 and 45.
Contested goods in Class 25
Clothing, footwear, headgear are identically contained in both lists of goods, despite minor differences in the wording.
Contested services in Class 35
Business research and business information are identically contained in both lists of services, despite minor differences in the wording.
The contested advertising and marketing; marketing include, as broader categories, or overlap with, the opponent’s promoting public awareness of environmental and sustainability issues and initiatives in Class 35. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested business analysis is included in the broader category of the opponent’s business consultancy, advisory, information and research services in Class 35. Therefore, they are identical.
The contested information relating to retailing includes the provision of information to business customers who are inquiring about the business management aspects of such a commercial activity, for example the opening and running of a shop, the product arrangement and display, the creating and operating of customer loyalty schemes etc. Insofar as these information services cannot be clearly separated from the opponent’s business consultancy, advisory, information and research services in Class 35, and in view of the overlap between these categories, they are considered identical.
The contested retailing of clothing refers to the same commercial activity as the opponent’s the bringing together, for the benefit of others, of a variety of clothing, enabling customers conveniently to view and purchase such goods in a department or retail store in Class 35. These services are identical.
The rest of the contested retailing services, namely retailing of bleaching preparations and other substances for laundry use, cleaning preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, furniture, mirrors, picture frames, furnishings, containers, and closures and holders therefor, displays, stands and signage, statues, figurines, works of art, ornaments and decorations, ladders and movable steps, locks and keys, door, gate and window fittings, valves and fasteners of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum or substitutes for all these materials, or of plastics, household or kitchen utensils and containers (not of precious metals or coated therewith), combs and sponges, brushes (except paintbrushes), articles for cleaning purposes, unworked or semi -worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, bed clothes and table covers (not of paper), footwear, headgear, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), toys are similar to the opponent’s the bringing together, for the benefit of others, of a variety of clothing, enabling customers conveniently to view and purchase such goods in a department or retail store in Class 35. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels, at least insofar as the retailing concerns fashion articles.
Contested services in Class 42
The contested design of furnishings, and consultancy relating thereto, design information have nothing relevant in common with any of the opponent’s goods or services. The contested services comprise the provision of all the things requisite for a particular room or house, such as furniture and accessories, including curtains and carpets, and consultancy and information regarding such services. The earlier mark does not have protection for any goods that can be considered furnishings, let alone that would have the same nature and purpose of the contested design services. The opponent argues that it is common for companies that design and manufacture clothing also to design and manufacture furnishings, and submits some printouts from the internet aimed at demonstrating that some brands are used in both market segments. In that regard, it has to be borne in mind that such brand extension is rather an exception and not the general rule. The nature of the contested services is the creation of the design, which is carried out by designers commissioned by companies that are involved in mass production of ready-made furnishings, or designers who offer personalised services to individual customers who wish to furnish their home or office. The differences in the purposes of the contested services and any of the opponent’s goods or services are huge. They do not have the same usual origin or distribution channels. They are neither complementary nor in competition. The mere fact that they can coincide in the relevant public does not lead to the finding of similarity.
Therefore, the contested design of furnishings, and consultancy relating thereto, design information are dissimilar to all of the opponent’s goods and services in Classes 9, 14, 18, 25, 35, 41 and 45.
- 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness varies from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.
- The signs
THE GREEN THREAD | |
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The signs comprise words in the English language. Consequently, and for reasons related to the conceptual comparison of the signs as set out below, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the European Union.
As regards the verbal element of the contested sign, the relevant public is likely to understand the expression ‘THE SUSTAINABLE THREAD’ as referring to the fine cord composed of fibres of cotton, wool or silk etc. that is either used for sewing and is durable or capable of being maintained, or that is environmentally friendly.
As indicated above, the verbal component ‘SUSTAINABLE’ may have two meanings, both of which describe the kind and quality of the goods and services at issue. However, the verbal components ‘THE…THREAD’ have no direct association with the goods and services in question, since several mental steps have to be taken in order to perceive any characteristics of the goods or services. At most, they are vaguely allusive to their method of production, composition or link with the textile industry, yet this does not materially affect the distinctive character which is normal.
In the case of the earlier mark, the verbal components ‘THE…THREAD’ will be perceived in the same manner as in the contested sign. The verbal component ‘GREEN’ may be understood as referring to something ‘environmentally friendly’, but also as the colour of ‘the thread’. In the first scenario, this word is devoid of any distinctive character for all of the goods and services at issue, as it conveys a purely informative message that they have a limited impact on the environment.
As regards the contested sign, the verbal components are depicted in green but otherwise standard font over three lines and are surrounded by a figurative element which brings to mind a loop made from a fourfold thread, also in green. Consequently, the figurative element does not introduce any specific semantic content that would go beyond to that conveyed by the verbal components.
The figurative element, albeit not descriptive, commonplace or otherwise non-distinctive, will have a limited impact in the overall impression produced by the sign. That is because, 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).
As to the dominance of the elements, the earlier mark, being a word mark, has no such elements by definition. Turning to the contested sign, based on the specific arrangement of the elements and their relative sizes, it is considered that the contested sign has no element that can be clearly considered more visually eye-catching than others.
Visually, the signs coincide in the verbal components ‘THE…THREAD’, notwithstanding the very slight stylisation used in the contested sign. However, the signs differ in the verbal component ‘GREEN’ present in the earlier mark, the verbal component ‘SUSTAINABLE’, the figurative element and the overall graphical representation of the contested sign. The verbal components in the signs have the same structure, since they comprise three separate words. Taking into consideration the impact of the verbal and figurative elements, and particularly the undiminished distinctiveness of the shared elements and the limited distinctiveness of the differentiating words, the signs are similar to an average degree.
Aurally, the signs coincide in the sounds corresponding to the verbal components ‘THE…THREAD’ and differ in the pronunciation of the verbal component ‘GREEN’ present in the earlier mark, and the verbal component ‘SUSTAINABLE’ of the contested sign. Based on the above considerations in relation to the distinctiveness of the verbal components, and particularly the undiminished distinctiveness of the shared elements as opposed to the limited distinctiveness of the differentiating words, the signs are similar to a high degree.
Conceptually, the applicant argues that an eco-conscious consumer will directly understand the difference between the notions of ‘green’ and ‘sustainable’. Nevertheless, for a part of the relevant public the signs both refer to a particular thread that has ‘ecological’ properties, without this impression being substantially altered by the contested sign’s figurative element. Taking into consideration the above findings on the distinctiveness of the individual verbal components and particularly the fact that the shared components, ‘THE…THREAD’, are distinctive, whilst the differentiating words are the least distinctive elements in each sign, for a part of the public the signs are similar to a high 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.
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 clear or evident 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
As has been concluded above, some of the contested goods and services are identical or similar to those of the earlier mark. The relevant public is composed of the public at large and professionals whose degree of attention varies from average to high. The earlier mark is considered to enjoy a normal degree of distinctiveness which affords it an average scope of protection vis-à-vis the contested sign.
The similarity between the signs results from the fact that their verbal components coincide in the distinctive word sequence ‘THE…THREAD’ and merely differ in the elements ‘GREEN’ and ‘SUSTAINABLE’. Admittedly, there are differences between the signs. However, they are not of such an impact as to dispel an average degree of similarity between the signs from a visual perspective, and even a high degree of similarity on the aural level and, for a part of the public, also on the conceptual level.
It constitutes frequent practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark. In the present case, given the identity or similarity of the relevant goods and services, and the fact that the signs differ in elements that have a lesser impact on the consumer’s perception, it is likely that at least a part of the relevant public will perceive the contested sign as a variation of the earlier mark, such as a modernised version or a mark used to designate new lines of products. This finding is not called into question by the fact that the relevant public will display enhanced degree of attention in relation to some of the goods and services at issue, because of the small distance between the overall impressions produced by the conflicting signs.
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 No 13 418 843. 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 and services found to be identical or similar 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, as regards the dissimilar goods and services, the Opposition Division points out that there is no need to proceed with a comparison of the signs for the remaining part of the public in the relevant territory, as the outcome of the present decision would still be the same.
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
Angela DI BLASIO | Solveiga BIEZA | Michele M. BENEDETTI-ALOISI |
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.