tigha | Decision 693/2015-4
Date Published: Sep 28, 2017
THE BOARDS OF APPEAL
DECISION of the Fourth Board of Appeal of 9 December 2016
In Case R 693/2015-4
TAIGA Aktiebolag 432 21Varberg Sweden Opponent / Appellant represented by BRANN AB, Drottninggatan 27, 111 51 Stockholm, Sweden
v
Actc Volmerswertherstraße 57 40221 Düsseldorf Germany Applicant / Respondent represented by HEUKING KÜHN LÜER WOJTEK, Magnusstr. 13, 50672 Köln, Germany
APPEAL relating to Opposition Proceedings No B 2 161 829 (European Union trade mark application No 11 459 617)
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
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Decision
Summary of the facts
1 By an application filed on 28 December 2012, Actc (‘the applicant’) sought to
register the word as amended
tigha
for, amongst others, the following goods:
Class 18 – Trunks and travelling bags; Beach bags; Bags for campers; Net bags for shopping; Shopping bags; Game bags [hunting accessories]; Garment bags for travel; Travelling trunks; Trunks [luggage]; Travelling sets [leatherware]; Travelling bags; Backpacks; Bags for climbers; School bags; Bags for sports; Haversacks; Pouches, of leather, for packaging;
Class 25 – Clothing, footwear, headgear; Suits; Clothing of imitations of leather; Motorists' clothing; Clothing; Dresses; Gabardines [clothing]; Belts [clothing]; Halfboots; Gloves [clothing]; Shirt yokes; Shirts; Shirt fronts; Wooden shoes; Trousers; Hats; Jackets [clothing]; Jerseys [clothing]; Stuff jackets [clothing]; Skull caps; Hoods [clothing]; Ready-made clothing; Headgear for wear; Camisoles; Short-sleeve shirts; Clothing of leather; Leggings [trousers]; Underwear; Coats; Pelisses; Caps [headwear]; Cap peaks; Outerclothing; Ear muffs [clothing]; Combinations [clothing]; Parkas; Ponchos; Pullovers; Waterproof clothing; Skirts; Sandals; Sashes for wear; Shoes; Soles for footwear; Footwear uppers; Tips for footwear; Footwear; Smocks; Ski gloves; Underpants; Socks; Boots; Boot uppers; Headbands [clothing]; Stockings; Stockings (Sweat-absorbent -); Tights; Sweaters; Tee-shirts; Jumper dresses; Knitwear [clothing]; Singlets; Topcoats; Uniforms; Underwear (Anti-sweat -); Pants; suits water-skiing; Vests; Hosiery; Top hats.
2 The application was published in accordance with Article 40 EUTMR on
16 January 2013.
3 On 12 April 2015 TAIGA Aktiebolag (‘the opponent’) filed an opposition against the above Community trade mark application based on Article 8(1)(b) EUTMR and on EU trade mark No 4 391 447 (‘the earlier mark’)
TAIGA
filed on 15 April 2005, registered on 21 March 2006 and duly renewed for, amongst others, the following goods:
Class 9 – Protective clothing; protective footwear, headwear, gloves; clothing for protection against fire; safety clothes, safety gloves and safety caps;
Class 18 – Backpacks, game bags;
Class 25 – Clothing; outer clothing; underwear; footwear; headgear for wear and headwear; work shoes and boots; working overalls; gloves; belts and socks.
4 The opposition was directed against the goods listed in paragraph 1 and was based on the earlier goods in Classes 9, 18 and 25 as set out in paragraph 2 above.
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5 Upon the applicant’s request for proof of use, the opponent provided the
following evidence: ‒ Annex 1 to 4: Photos of trousers, backpacks, packages mainly labelled as
follows:
(in this colour combination or with an organge background or in black and white);
‒ Annex 5: Photos of a shop’s décor, jackets are visible in the background;
‒ Annex 6: Several catalogues (dated for example 2011/2012) showing outdoor jackets, ski trousers, outdoor long and short trousers, winter overalls, safety jackets and trousers, heads, gloves, thermal socks and thermal underwear, all labelled with the above logo. The other clothing such a as t-shirts do not show the label;
‒ Annex 7: Extracts from websites showing the mark dated (handwritten): December 2008, October 2009, August 2010, December 2011, April 2012, and December 2013;
‒ Annex 8 to 10: Extracts of distributors’ websites showing clothing (outdoor jackets, trousers, thermal underwear, heads, t-shirts, socks) labelled as above. The products can be bought on the website (dated 2014);
‒ Annex 11, 12: Ambulance catalogue and related website including interviews
with personnel;
‒ Annex 13: Invoices dated 2006 - 2013. On each page the above logo
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is visible on its top right-hand side. The articles do not mention the word ‘taiga’. Due to the title of the products they can, however, be linked to products shown in the catalogue. The opponent summarised the invoices as follows:
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‒ Annex 14: An affidavit from the opponent’s managing director, stating that the earlier mark has been used since 2006 throughout the European Union. Some of the opponent’s products are sold to an ambulance company.
6 The opponent stated that it sells ‘clothes used by professionals and non- professionals, e.g. jackets that are warm, wind and water proof are used also by the public in general during the winter. Especially the clothes, headgear and footwear to be seen under heading FUNTION and ACCESSORIES in the catalogues enclosed, are products sold to, and used by, the public in general [...] while the products under the heading HIG-VIS, POWER and AMBULANCE are more Class 9 products, even though some of these goods are being used by the public in general [...]’ [...] ‘The reason why the mark can be seen only on part of the goods in the catalogues is that the angles from which the photos are taken, do not allow the visibility of the mark at all times.’ (Statement of 11 February 2014).
7 The applicant responded that the opponent only operated in the sector of protective clothing included in Class 9. No use was proven for goods in Class 25.
8 By decision of 9 February 2015 (contested decision), the Opposition Division rejected the opposition entirely and ordered the opponent to bear the costs of the proceedings. It held that the proof of use, as well as the comparison of the goods, were irrelevant and rejected the opposition due to the dissimilarity of the signs. It found that the general consumer would distinguish the marks due to
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their conceptual difference. While the earlier mark would be linked to a boreal forest or snow forest, the contested mark lacked any meaning. It further held that the structure of the sign’s syllables were different (‘TAI’ vs ‘TIG’ and ‘GA’ vs ‘HA’).
9 The opponent filed an appeal. It requests that the contested decision be annulled
and the application rejected. Its arguments may be summarised as follows: ‒ Genuine use of the earlier mark was proven. Use has been proven also for footwear since the category includes socks and the trade mark was used for socks.
‒ The earlier mark has been used not only for weather protective outdoor clothing but also ordinary caps, normal pants and trousers, underwear and headgear which are used by business travellers, foreign workers, hunters, fisherman etc. Any cap, jacket and trousers have the purpose of protecting against the wind, rain and cold without being a subcategory under the heading clothing and headgear. Therefore, use has been proven for clothing, headgear and footwear.
‒ The contested goods in Class 18 are identical or at least highly identical to the goods of the earlier mark in Class 18. They satisfy the customer’s need for keeping and carrying items.
‒ The contested goods in Class 25 are identical or at least highly similar to the goods of the earlier mark in Classes 9 and 25. They serve the purpose of being worn by humans for fashion or protection and share the same distribution channels.
‒ The signs are highly similar from a visual perspective. Both signs share the letter sequence ‘T I G A’. They both start with a ‘T’ and end with an ‘A’. They have the same number of syllables and four out of five letters in common. Taking into account the consumer’s imperfect recollection, they give the same overall appearance.
‒ Aurally, the signs are also similar to a high degree. ‘Taiga’ is pronounced ‘taiga’ with the stress on the first syllable. ‘Tigha’ is pronounced the same way, in English without the mute ‘h’.
‒ Conceptually, the earlier mark is not understood as a boreal forest or snow
forest. It is not a word in everyday parlance.
‒ Due to the similarity of the signs and the goods and services at hand there is a likelihood of confusion. In particular, there are no clear conceptual differences to distinguish between the signs.
10 The applicant requests that the appeal be dismissed and the opponent ordered to bear the costs of the proceedings. It endorses the contested decision. In addition it argues as follows: ‒ The opponent did not prove use of its mark for the goods in Class 18.
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‒ Further, no use has been proven for ‘footwear’ and ‘work shoes and boots’ in
Class 25. Footwear, work shoes or boots do not include socks.
‒ The proof of use only refers to special weather protective outdoor clothing for the purpose of protection against cold, windy and / or rainy weather conditions. This kind of clothing is a coherent group of goods under the general terms ‘clothing’, ‘outer clothing’, ‘underwear’ and ‘headgear for wear and headwear’. The same applies to ‘gloves’, ‘belts’ and ‘socks’. The specification which should be taken into account is the following:
‘Clothing; outer clothing; underwear; headgear for wear and headwear; gloves; belts and socks; all aforementioned goods to be used as special weather protective outdoor clothing for the purpose of protection against cold, windy and/or weather conditions only; working overalls’.
‒ Most of the contested goods are dissimilar to the above. They serve different purposes, target different groups of consumers and are not sold in the same stores.
‒ For the goods in Class 9 use has only been proven for safety jackets and
trousers.
‒ The signs are phonetically dissimilar. The contested sign will not be split up into two syllables since the letter sequence ‘GH’ will not be split. The contested sign therefore consists of only one syllable. There is no evidence that the contested mark would be pronounced like the English word tiger. The element ‘gh’ in the middle stresses the pronunciation so that the ‘I’ vowel is pronounced as such and not as ‘AI’. The sign ‘tigha’ will, therefore, be pronounced [tIga] and not [‘taIga:]. On the other hand ‘Taiga’ is pronounced [‘taI:ga] with the stress on the first syllable.
‒ The earlier mark ‘TAIGA’ informs the consumer about the purpose of the goods, namely that they can be used to shield and protect in forbidding geographical areas.
Reasons
11 The appeal is partially well founded. There is a likelihood of confusion
regarding part of the contested goods and the earlier mark.
Proof of use of the earlier marks
12 The applicant requested proof of use of the earlier mark according to Article
42(2) EUTMR before the Opposition Division.
13 Pursuant to Article 42(2) EUTMR the proprietor of an earlier EU trade mark shall prove that the mark has been genuinely used provided the earlier EU trade mark has been registered for not less than five years at that date of publication of the contested application.
14 In order to assess whether a trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be
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carried out, taking account of all the relevant factors in the case. In such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 29; 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 27; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).
15 Pursuant to Rule 22(3) CTMIR, the proof must relate to the place, time, extent and nature of use of the earlier trade mark. Rule 22(3) CTMIR does not state that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use. Thus, items of evidence taken together may establish the necessary facts, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 61; 24/05/2012, T-152/11, Mad, EU:T:2012:263, § 33, 34).
16 After examination of the evidence of proof of use there is no doubt that the earlier mark has been used in the course of the relevant period, namely from 16 January 2008 to 15 January 2013. Most of the evidence is dated and within the relevant period.
17 The invoices (opponent’s observations of 11 February 2014, Annex 13), the affidavit (Annex 14) and the catalogues (Annexes 11 and 12) prove that the earlier mark has been used in, at least, Denmark, Estonia, Germany, Netherlands, and Sweden.
18 The evidence also shows that trade mark has mainly been used in the following
form:
. The logo is a variation
of the word mark as registered which does not alter its distinctive character pursuant to Article 15(1)(a) EUTMR. The typeface is a standard one; the frame and the red colour are merely decorative.
19 The parties share all these conclusions. They discuss, however, for which of the
registered goods use had, in fact, been proven.
Class 9 – Protective clothing; protective footwear, headwear, gloves; clothing for protection against fire; safety clothes, safety gloves and safety caps.
20 Regarding ‘protective clothing; protective headwear, gloves; safety clothes, safety gloves and safety caps’ it is undisputed that the sign has been used for safety jackets and trousers. The evidence indeed shows use of trousers and jackets bearing reflectors for better visibility. Further, one of the catalogues states that the jackets’ layer protects against liquid-borne contagion and
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hazardous chemicals. There is also sufficient proof of use for ‘safety gloves and safety caps’ and for ‘protective headwear, gloves’ (see the pictures reproduced in the catalogues and invoices).
21 No evidence of use has, however, been submitted for the registered ‘clothing for protection against fire’. The evidence (Annexes 11 and 12) shows that the trade mark have been used by ambulance professionals but not by firemen.
22 The Board concurs with the applicant’s that no use has been proven for ‘protective footwear’ in Class 9. There are some invoices referring to a serial number which can be related to shoes shown on the website of the distributor (Annex 8 to 10). However, the picture does not allow drawing for any conclusion regarding the nature of use since the trade mark does not appear on the pictures. The affidavit states that it is due to the unfortunate photographic angle that the trade mark is not seen. The argument is unconvincing since the opponent could have filed better pictures showing the mark on the product.
Goods in Class 18
23 The Board agrees with the applicant’s view that no use has been proven for the goods registered in Class 18, namely ‘backpacks, and ‘game bags’. The opponent provided one single photo of a backpack (Annex 1 to 4). Neither the catalogues nor the invoice reflect that the opponent sold during the relevant period any backpacks or game bags bearing the trade mark in dispute.
Goods in Class 25
24 In relation to goods in Class 25, the earlier mark is registered in relation to the following: ‘Clothing; outer clothing; underwear; footwear; headgear for wear and headwear; work shoes and boots; working overalls; gloves; belts and socks’.
25 The catalogues and invoices show clothing such as outdoor jackets, trousers, short pants, working overall, underwear, headgear, gloves, socks, and belts bearing the earlier mark (see Annexes 8 to 12).
26 With regard to ‘footwear, work shoes and boots’, it is undisputed that the evidence does not demonstrate that the earlier mark has been used for any of these goods. There are some invoices referring to a serial number which can be related to shoes shown on the website of the distributor (Annex 8 to 10). However, the picture does not allow drawing for any conclusion regarding the nature of use since the trade mark does not appear on the pictures.
27 The opponent takes however the view that footwear includes socks. The Board cannot follow this argument. ‘Socks’ are an item of ‘clothing’. Hence it falls – only- under the indication of the Class heading ‘clothing’ and not under ‘footwear’. Any complementarity to ‘footwear’ is irrelevant at the stage of assessing the issue pf proof of use. Consequently, use of the earlier mark for ‘socks’ cannot be considered use for the registered goods ‘footwear’.
Conclusion on the proof of use
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28 As a result, Board will assess the likelihood of confusion on the basis of the
goods for which use has been proven, namely:
Class 9 – Protective clothing; protective, headwear, gloves; safety clothes, safety gloves and safety caps;
Class 25 – Clothing; outer clothing; underwear; headgear for wear and headwear; working overalls; gloves; belts and socks.
Article 8(1)(b) CTMR
29 In accordance with Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of the identity or similarity of the signs and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
Relevant public
30 Since the earlier mark is an EU trade mark, the relevant territory for analysing
the likelihood of confusion is the European Union.
31 The relevant goods are addressed at the public at large and at professionals. While buying the earlier mark’s goods, the consumer will pay an enhanced level of attention. The functional characteristics of the clothing play an important role. Regarding some of the contested goods which are all clothing, footwear, headgear and bags the relevant average consumer pays an average level of attention.
Comparison of the goods
32 The assessment of the similarity of goods and services must take into account all relevant factors, which include the nature, their purpose and method of use, and whether they are in competition with each other or complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example the distribution channels of the goods concerned (11/07/2007, T-443/05, Piranam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).
Contested goods in Class 18
33 All the contested goods in Class 18 (essentially bags, backpacks, haversacks and pouches), differ from the earlier goods for which genuine use has been proven as
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regards their nature and purpose (one is meant to carry goods, the others to cover and protect the body). Moreover they are normally manufactured by different producers. The fact that goods such as bags and clothing may be sold in the same commercial establishments, such as large shops and supermarkets, is not particularly significant since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin. Nor are the goods in competition (13/12/2004, T-8/03, Emilio Pucci, EU:T:2004:358, § 3 and 11/07/2007, T-443/05, Piranam, EU:T:2007:219, § 44). The contested ‘bags’ are not typical clothing accessories such as “purses and handbags” which have an important aesthetic function and that are often sold with goods in Class 25 at sales outlets in both major retail establishments and more specialised shops. Consequently, these goods are dissimilar.
Contested good in Class 25
34 All the contested goods in Class 25 are clothing, footwear and headgear.
35 The contested ‘clothing and headgear’ are identically contained in both lists of
goods. These goods are therefore identical.
36 The contested ‘footwear’ is considered to be similar to an average degree to ‘clothing’. All goods belonging to the broad category ‘footwear’ have a very similar nature to the goods ‘clothing and headgear’. They serve an identical purpose since they are used to cover and protect various parts of the human body against the elements. They are also fashion articles. Besides, many manufacturers and designers will design and produce all of the aforementioned items. Moreover, ‘footwear’, ‘clothing’ and ‘headgear’ are often sold in the same retail shops and they are complementary.
Comparison of the signs
37 The comparison of the conflicting marks shall assess the visual, aural or conceptual similarity of the marks in question, based on the overall impression given by the marks and bearing in mind, in particular, their distinctive and dominant elements (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).
38 The marks to be compared are:
Contested sign Earlier sign
tigha Taiga
39 Contrary to the contested decision’s findings, the signs at hand are highly similar from a visual perspective. They share four identical letters out of five in almost the same positions, namely ‘t i g a’. They are also identical in length. They only differ in the third letter in the contested sign, namely ‘h’, and the second letter ‘a’ in the earlier sign. Overall they convey the same visual impression.
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40 Aurally the signs are identical at least for English-speaking consumers who will pronounce both signs as / t ə/. It is impossible to pronounce the ‘h’ in the ˈ ʌɪɡ middle of the contested sign following English pronunciation rules. The pronunciation of the syllable ‘ti’ and ‘tai’ is identical. For example the element ‘ai’ in the English word ‘Thai’ is pronounced the same way as the ‘i’ in the word tiger: t (see ‘Thai, n. and adj.’ ˈ ʌɪ Oxford English Dictionary, December 2015). The example also shows that the ‘h’ that comes after a consonant is usually not pronounced.
41 From a conceptual perspective, the signs will not be linked to any concept by most of the relevant public. Although it is true that ‘Taiga’ refers the coniferous evergreen forests of subarctic lands, covering vast areas of northern North America and Eurasia, this fact is mostly unknown by the average consumer. In any event, even if ‘Taiga’ were understood, the contested sign lacks any meaning so that the signs do not share any common concept.
Global assessment
42 The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
43 As far as the goods have been found dissimilar’ the opposition shall be dismissed. According to Article 8(1)(b) EUTMR the similarity of the goods is an indispensable condition for a likelihood of confusion.
44 Regarding the goods found being similar or identical, a likelihood of confusion does however exist. The earlier mark possesses a normal level of distinctiveness. Even if it were linked to a forest or a geographical region, it has no meaning regarding the goods for which it has been used. The signs are identical from an oral perspective. From a visual perspective, the signs are highly similar. Insofar it should also be recalled that the consumer usually choses the goods at hand visually. Choosing the goods at hand visually, the consumer hardly has the chance to directly compare marks directly but must rely on his or her imperfect recollection (see 18/06/2013, T-338/12, K9 products, EU:T:2013:327, § 53).
45 Even the attentive consumer will, therefore, consider the contested similar or identical goods branded with the mark ‘tigha’ as coming from the same or a related entity as the outdoor and safety clothing branded ‘Taiga’.
46 A likelihood of confusion therefore exists regarding all the contested goods
being similar, highly similar or identical to the goods of the earlier mark.
Conclusion
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47 In view of the foregoing, the contested decision shall be partially annulled, namely for all contested goods in class 25 and the application should be rejected accordingly.
Costs
48 Since each party wins and losses and part, they shall bear their own costs in the
opposition and the appeal proceedings pursuant to Article 85(2) EUTMR.
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Order On those grounds,
THE BOARD
hereby:
1. Annuls the contested decision that it rejects the opposition for the
following goods:
Class 25 – Clothing, footwear, headgear; Suits; Clothing of imitations of leather; Motorists' clothing; Clothing; Dresses; Gabardines [clothing]; Belts [clothing]; Halfboots; Gloves [clothing]; Shirt yokes; Shirts; Shirt fronts; Wooden shoes; Trousers; Hats; Jackets [clothing]; Jerseys [clothing]; Stuff jackets [clothing]; Skull caps; Hoods [clothing]; Ready- made clothing; Headgear for wear; Camisoles; Short-sleeve shirts; Clothing of leather; Leggings [trousers]; Underwear; Coats; Pelisses; Caps [headwear]; Cap peaks; Outerclothing; Ear muffs [clothing]; Combinations [clothing]; Parkas; Ponchos; Pullovers; Waterproof clothing; Skirts; Sandals; Sashes for wear; Shoes; Soles for footwear; Footwear uppers; Tips for footwear; Footwear; Smocks; Ski gloves; Underpants; Socks; Boots; Boot uppers; Headbands [clothing]; Stockings; Stockings (Sweat-absorbent -); Tights; Sweaters; Tee-shirts; Jumper dresses; Knitwear [clothing]; Singlets; Topcoats; Uniforms; Underwear (Anti-sweat -); Pants; suits water-skiing; Vests; Hosiery; Top hats.
2. Rejects the contested application for these goods; 3. Dismisses the appeal for the remainder; 4. Orders each party to bear its own costs in the opposition and the appeal
proceedings.
Signed
D. Schennen
Signed
S. Martin
Signed
C. Bartos
Registrar:
Signed
H.Dijkema
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