VAGABOND IN PARADISE | Decision 2701301

Date Published: Oct 1, 2017

OPPOSITION No B 2 701 301

Vagabond Skor Varberg AB, P O Box 521, 432 19 Varberg, Sweden (opponent), represented by Awapatent AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative)

a g a i n s t

Dolores Luque, Saline BP 507, 97133 Saint-Barthélemy, France (applicant).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 301 is partially upheld, namely for the following contested goods:

Class 24:        Lining fabric for shoes; linen lining fabric for shoes.

Class 25:        Headgear; footwear; clothing; hats; thermal headgear; head sweatbands; earbands; headbands [clothing]; fascinator hats; bonnets; bucket caps; bonnets [headwear]; bathing caps; shower caps; nightcaps; ski hats; waterpolo caps; tams; knitted caps; knot caps; bobble hats; berets; tam o'shanters; garrison caps; skull caps; boaters; sun hats; mantillas; top hats; wimples; fezzes; peaked headwear; children's headwear; millinery; sports headgear [other than helmets]; sedge hats (suge-gasa); paper hats for wear by nurses; paper hats for wear by chefs; woolly hats; fur hats; leather headwear; rain hats; beach hats; fashion hats; fedoras; sports caps; golf caps; flat caps; caps with visors; caps [headwear]; baseball caps; sun visors [headwear]; sun visors; turbans; chefs' hats; toques [hats]; small hats; miters [hats]; snow boots; casual footwear; ballet slippers; sneakers; boots; pumps [footwear]; winter boots; riding shoes; work boots; mountaineering boots; rain boots; fishing boots; rubber fishing boots; ladies' boots; waterproof boots for fishing; army boots; polo boots; infants' boots; boots for motorcycling; booties; lace boots; shoe straps; high-heeled shoes; footwear [excluding orthopedic footwear]; dance shoes; cycling shoes; running shoes; tap shoes; hunting boots; work shoes; bowling shoes; boxing shoes; basketball sneakers; baseball shoes; climbing footwear; aqua shoes; athletic shoes; climbing boots [mountaineering boots]; shoes with hook and pile fastening tapes; pedicure slippers; women's foldable slippers; disposable slippers; bootees (woollen baby shoes); foam pedicure slippers; slippers; inner socks for footwear; rubbers [footwear]; japanese footwear of rice straw (waraji); gym boots; japanese split-toed work footwear (jikatabi); footwear made of vinyl; canvas shoes; leather shoes; volleyball shoes; yoga shoes; training shoes; tennis shoes; boots for sports; dress shoes; snowboard shoes; ski and snowboard shoes and parts thereof; ski boots; rugby boots; rainshoes; sandals and beach shoes; beach shoes; mountaineering shoes; walking shoes; hockey shoes; handball shoes; golf footwear; football shoes; deck shoes; shoe covers, other than for medical purposes; galoshes; esparto shoes or sandals; waders; cleats for attachment to sports shoes; studs for football boots; slip-on shoes; leisure shoes; bath shoes; footwear for men; children's footwear; footwear for women; infants' footwear; flat shoes; footwear not for sports; pullstraps for shoes and boots; japanese toe-strap sandals (asaura-zori); pedicure sandals; zori; japanese style sandals of felt; japanese style sandals of leather; japanese style sandals (zori); bath sandals; sandals; ski boot bags; sandal-clogs; japanese style clogs and sandals; high rain clogs (ashida); japanese style wooden clogs (geta); low wooden clogs (koma-geta); low wooden clogs (hiyori-geta); wooden shoes; insoles for footwear; leather slippers; mules; valenki [felted boots]; flip-flops; heel inserts; sports shoes; gymnastic shoes; bath slippers; insoles [for shoes and boots]; shoe inserts for non-orthopedic purposes; insoles; snowboard jackets; lingerie; neckwear; string fasteners for haori (haori-himo); articles of clothing for theatrical use; albs; bandanas [neckerchiefs]; bandeaux [clothing]; maternity bands; tennis sweatbands; neckbands; sweatbands; bustles for obi-knots (obiage-shin); playsuits [clothing]; puttees and gaiters; stockings; pajama bottoms; bottoms [clothing]; baby bottoms; tracksuit bottoms; sweat-absorbent stockings; baselayer bottoms; bibs, not of paper; cloth bibs; cloth bibs for adult diners; suspender belts for men; bra straps; braces for clothing [suspenders]; sweat bands for the wrist; hosiery; boleros; teddies [undergarments]; boas [necklets]; boas; shell jackets; motorcycle jackets; bomber jackets; blousons; gowns for doctors; nurse dresses; laboratory coats; maternity smocks; barber smocks; white coats for hospital use; overalls; coveralls; blazers; bikinis; bermuda shorts; plastic baby bibs; waist belts; sports caps and hats; cardigans; hoods [clothing]; shampoo capes; waterproof capes; capes; cloaks; corselets; long johns; bathing trunks; boxer shorts; pants; ski balaclavas; caftans; shoulder wraps [clothing]; dust coats; bathing suit cover-ups; neck tubes; camisoles; neck scarfs [mufflers]; pea coats; tube tops; burnouses; bustiers; shawls [from tricot only]; shawls and stoles; shawls and headscarves; shawls; sports socks; bed socks; anti-perspirant socks; sweat-absorbent socks; socks; wrist warmers; handwarmers [clothing]; chasubles; paper hats for use as clothing items; paper hats [clothing]; party hats [clothing]; footmuffs, not electrically heated; wrap belts for kimonos (datemaki); money belts [clothing]; sash bands for kimono (obi); belts made out of cloth; fabric belts [clothing]; belts made from imitation leather; leather belts [clothing]; cummerbunds; belts [clothing]; camiknickers; open-necked shirts; button down shirts; collared shirts; casual shirts; shirts for suits; fishing shirts; nighties; dress shirts; hunting shirts; camouflage shirts; shirts; desert boots; anglers' shoes; ballroom dancing shoes; slipper socks; water socks; thermal socks; footless socks; men's socks; trouser socks; socks and stockings; tennis socks; woollen socks; japanese style socks (tabi); coverups; roll necks [clothing]; one-piece playsuits; turtlenecks; collars for dresses; mock turtlenecks; shoulder wraps; footless tights; body stockings; woollen tights; maillots [hosiery]; athletic tights; tights; headdresses [veils]; oilskins [clothing]; cheongsams (chinese gowns); chemisettes; blouses; short-sleeve shirts; woven shirts; polo shirts; button-front aloha shirts; aloha shirts; shirts and slips; ramie shirts; corsets; corselets; tightening-up strings for kimonos (datejime); jumper suits; waist strings for kimonos (koshihimo); dry suits; one-piece suits; wetsuits for surface watersports; sunsuits; pram suits; baby bunting [clothing]; wet suits; waterproof suits for motorcyclists; flying suits; wet suits for surfing; snow boarding suits; ski suits for competition; wet suits for water-skiing; snow suits; wet suits for water-skiing and sub-aqua; wet suits for windsurfing; wind suits; nurse overalls; combinations [clothing]; slips [undergarments]; bib shorts; sliding shorts; crinolines; silk ties; bolo ties with precious metal tips; bolo ties; neckties; ear muffs [clothing]; bustle holder bands for obi (obiage); cagoules; cravats; zoot suits; three piece suits [clothing]; halloween costumes; costumes for use in role-playing games; men's suits; folk costumes; leather suits; theatrical costumes; evening suits; beach clothes; masquerade costumes; dance costumes; suits; foundation garments; sashes for wear; cowls [clothing]; costumes for use in children's dress up play; costumes; sports singlets; duffel coats; vest tops; down vests; jacket liners; american football bibs; halter tops; soccer bibs; denims [clothing]; tap pants; babies' pants [clothing]; pantaloons; gauchos; bloomers; panties; breeches; bib tights; cycling shorts; stoles; fur stoles; silk scarves; mufflers [clothing]; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; riding gloves; winter gloves; pantie-girdles; girdles; gabardines; shoulder scarves; neck scarves; head scarves; furs [clothing]; cashmere scarves; neckerchiefs; kerchiefs [clothing]; foulards [clothing articles]; scarfs; sock suspenders; detachable collars; detachable neckpieces for kimonos (haneri); short sets [clothing]; body warmers; fleece vests; quilted vests; korean traditional women's waistcoats [baeja]; leather waistcoats; athletics vests; hunting vests; camouflage vests; wind vests; gilets; vests; knee warmers [clothing]; gloves including those made of skin, hide or fur; gloves for cyclists; wetsuit gloves; knitted gloves; snowboard gloves; ski gloves; motorcycle gloves; driving gloves; camouflage gloves; gloves [clothing]; skirts; jodhpurs; jerseys [clothing]; denim jeans; stocking suspenders; morning coats; leg warmers; chaps (clothing); mackintoshes; rainproof clothing; fur cloaks; baselayer tops; baby tops; warm-up tops; tops [clothing]; cyclists' clothing; gaiters; donkey jackets; heavy jackets; rompers; liveries; yashmaks; bed jackets; maternity lingerie; leggings [trousers]; layettes [clothing]; ascots; swaddling clothes; full-length kimonos (nagagi); kimonos; kilts; yashmaghs; snap crotch shirts for infants and toddlers; baby bodysuits; unitards; bodies [clothing]; leotards; petti-pants; short petticoats; petticoats; skorts; culotte skirts; pleated skirts for formal kimonos (hakama); tennis skirts; golf skirts; fur muffs; cuffs; boot cuffs; sleeveless jerseys; padded shirts for athletic use; sports jerseys and breeches for sports; volleyball jerseys; sports shirts with short sleeves; moisture-wicking sports shirts; sports jerseys; rugby tops; cycling tops; football jerseys; running vests; long sleeved vests; undershirts for kimonos (koshimaki); rash guards; undershirts; swimming trunks; swim wear for gentlemen and ladies; bathing costumes for women; maillots; fitted swimming costumes with bra cups; bathing suits; bathing suits for men; bowties; negligees; snowboard mittens; monokinis; arm warmers [clothing]; mittens; miniskirts; pop socks; eye masks; sleep masks; coats for women; fur coats and jackets; heavy coats; mantles; sheepskin coats; coats of denim; cotton coats; evening coats; raincoats; suit coats; winter coats; car coats; coats; maniples; muffs [clothing]; golf pants, shirts and skirts; stretch pants; trews; trousers of leather; slacks; yoga pants; dress pants; khakis; sweatpants; cargo pants; moisture-wicking sports pants; snowboard trousers; snow pants; nurse pants; golf trousers; hunting pants; camouflage pants; lounge pants; warm-up pants; short trousers; wind pants; walking breeches; pedal pushers; trousers; baby doll pyjamas; pelerines; rain ponchos; ponchos; polo knit tops; tennis shirts; fleeces; pelisses; beach robes; lounging robes; bathrobes; robes; balaclavas; bath robes; parkas; korean topcoats [durumagi]; overcoats; trousers for children; padded pants for athletic use; waterproof trousers; sports pants; trousers shorts; corduroy trousers; replica football kits; jumper dresses; women's ceremonial dresses; choir robes; christening robes; ball gowns; sundresses; dresses; frock coats; pyjamas [from tricot only]; pajamas (am.); turtleneck sweaters; v-neck sweaters; mock turtleneck sweaters; tank tops; crew neck sweaters; polo sweaters; guernseys; sweaters; long sleeve pullovers; hooded pullovers; slipovers [clothing]; slipovers; tennis pullovers; pullovers; boardshorts; gym shorts; rugby shorts; sweat shorts; golf shorts; boxing shorts; trunks; shorts; boy shorts [underwear]; waist cinchers; knee-high stockings; sarongs; saris; bib overalls for hunting; salopettes; shortalls; bushjackets; hunting boot bags; ladies' dresses; dresses made from skins; muumuus; shift dresses; tennis dresses; wedding dresses; bridesmaid dresses; strapless bras; bralettes; moisture-wicking sports bras; sports bras; adhesive bras; brassieres; thermal underwear; men's underwear; babies' undergarments; disposable underwear; ladies' underwear; knitted underwear; union suits; sweat-absorbent underwear; underwear; undershirts for kimonos (juban); turtleneck shirts; mock turtleneck shirts; ankle socks; dinner jackets; dinner suits; underpants; padded shorts for athletic use; fleece shorts; tennis shorts; judo suits; short-sleeved or long-sleeved t-shirts; short-sleeved t-shirts; printed t-shirts; yoga shirts; crop tops; tee-shirts; pantsuits; women's suits; skirt suits; paper aprons; plastic aprons; aprons [clothing]; tabards; pinafores; hooded sweatshirts; hooded tops; sweat shirts; shell suits; jockstraps [underwear]; gym suits; overshirts; over-trousers; thongs; tunics; knitwear [clothing]; knit shirts; togas; trench coats; combative sports uniforms; thobes; leisure suits; taekwondo suits; evening wear; formal evening wear; skating outfits; motorcycle riding suits; kendo outfits; karate suits; jogging sets [clothing]; formalwear; running suits; baseball uniforms; referees uniforms; martial arts uniforms; athletic uniforms; aikido suits; loungewear; ballet suits; jackets being sports clothing; sleeved jackets; sweatjackets; fishing vests; fishermen's jackets; jogging tops; hunting jackets; camouflage jackets; lumberjackets; riding jackets; korean outer jackets worn over basic garment [magoja]; warm-up jackets; windshirts; shirt-jacs; chefs' whites; jackets [clothing]; short overcoat for kimono (haori); stuff jackets [clothing]; uniforms for commercial use; school uniforms; sailor suits; uniforms for nurses; uniforms; twin sets; tutus; work clothes; windproof clothing; ready-made clothing; men's and women's jackets, coats, trousers, vests; sleeveless jackets; basic upper garment of korean traditional clothes [jeogori]; reversible jackets; light-reflecting jackets; safari jackets; coats for men; polar fleece jackets; quilted jackets [clothing]; long jackets; rainproof jackets; knit jackets; sheepskin jackets; fur jackets; down jackets; denim jackets; suede jackets; leather jackets; tracksuit tops; sports jackets; smoking jackets; ski jackets; motorcyclists' clothing of leather; leather clothing; cashmere clothing; leisurewear; triathlon clothing; surfwear; sports clothing [other than golf gloves]; sportswear; garments for protecting clothing; weatherproof clothing; rainwear; maternity sleepwear; figure skating clothing; japanese sleeping robes (nemaki); nightwear; clothing for gymnastics; maternity clothing; outerclothing; bridesmaids wear; dance clothing; clothing for horse-riding [other than riding hats]; outerclothing for men; outerclothing for girls; weather resistant outer clothing; womens' outerclothing; thermally insulated clothing; clothing for fishermen; clothing for martial arts; clothing for skiing; clothing for wear in judo practices; tennis wear; clothing for wear in wrestling games; infant wear; menswear; boys' clothing; girls' clothing; ladies' clothing; baby clothes; motorists' clothing; japanese traditional clothing; children's wear; sailing wet weather clothing; waterproof outerclothing; silk clothing; plush clothing; paper clothing; linen clothing; woolen clothing; clothing of imitations of leather; clothing made of fur; woven clothing; veils [clothing]; visors [headwear].

2.        European Union trade mark application No 15 062 789 is rejected for all the above goods. 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 15 062 789, namely against some of the goods in Class 24 and all of the goods in Class 25. The opposition is based on European Union trade mark registration No 12 293 544, French trade mark registration No 1 712 899, Swedish trade mark registration No 143 057, Swedish trade mark registration No 216 078, United Kingdom trade mark registration No 2 178 131, United Kingdom trade mark registration No 1 455 649, German trade mark registration No 39 501 871 and German trade mark registration No 2 079 244. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier French trade mark registration No 1 712 899, the Swedish trade mark registration No 143 057, the Swedish trade mark registration No 216 078, the United Kingdom trade mark registration No 2 178 131, the United Kingdom trade mark registration No 1 455 649, the German trade mark registration No 39 501 871 and the German trade mark registration No 2 079 244 on which the opposition is based.

On 31/05/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 05/10/2016.

The opponent did not submit any evidence concerning the substantiation of the above-mentioned earlier trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the French trade mark registration No1 712 899, the Swedish trade mark registration No 143 057, the Swedish trade mark registration No 216 078, the United Kingdom trade mark registration No 2 178 131, the United Kingdom trade mark registration No 1 455 649, the German trade mark registration No 39 501 871 and the German trade mark registration No 2 079 244. The examination of the opposition will now continue on the basis of the remaining earlier mark, namely the European Union trade mark registration No 12 293 544.

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 and services

The goods on which the opposition is based are the following:

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; shoe care products, namely balsams, cream, paste, wax and polish for polishing, cleaning and rain protection for shoes and other footwear.

Class 18:        Bags; attaché-cases; backpacks; card cases; hand bags; hunting bags; briefcases; shopping bags; purses; beach bags; school bags; bands of leather; travelling bags; suitcases; trunks; umbrellas, parasols and walking sticks; leather and leather imitations; saddlery.

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 24:        Lining fabric for shoes; hat linings, of textile, in the piece; linen lining fabric for shoes.

Class 25:        Headgear; footwear; clothing; hats; thermal headgear; head sweatbands; earbands; headbands [clothing]; fascinator hats; bonnets; bucket caps; bonnets [headwear]; bathing caps; shower caps; nightcaps; ski hats; waterpolo caps; tams; knitted caps; knot caps; bobble hats; berets; tam o'shanters; garrison caps; skull caps; boaters; sun hats; hat frames [skeletons]; mantillas; top hats; wimples; fezzes; peaked headwear; children's headwear; millinery; sports headgear [other than helmets]; sedge hats (suge-gasa); paper hats for wear by nurses; paper hats for wear by chefs; woolly hats; fur hats; leather headwear; rain hats; beach hats; fashion hats; fedoras; sports caps; golf caps; flat caps; caps with visors; caps [headwear]; baseball caps; cap peaks; sun visors [headwear]; sun visors; turbans; chefs' hats; toques [hats]; rubber soles; small hats; miters [hats]; non-slipping devices for footwear; snow boots; casual footwear; ballet slippers; sneakers; boots; pumps [footwear]; winter boots; riding shoes; work boots; mountaineering boots; rain boots; fishing boots; rubber fishing boots; ladies' boots; waterproof boots for fishing; army boots; polo boots; infants' boots; boots for motorcycling; booties; tips for footwear; lace boots; toe boxes; shoe straps; high-heeled shoes; footwear [excluding orthopedic footwear]; dance shoes; cycling shoes; running shoes; tap shoes; hunting boots; work shoes; bowling shoes; boxing shoes; basketball sneakers; baseball shoes; climbing footwear; aqua shoes; athletic shoes; climbing boots [mountaineering boots]; shoes with hook and pile fastening tapes; pedicure slippers; women's foldable slippers; disposable slippers; bootees (woollen baby shoes); foam pedicure slippers; slippers; inner socks for footwear; rubbers [footwear]; japanese footwear of rice straw (waraji); gym boots; japanese split-toed work footwear (jikatabi); footwear made of vinyl; canvas shoes; leather shoes; volleyball shoes; yoga shoes; training shoes; tennis shoes; boots for sports; dress shoes; snowboard shoes; ski and snowboard shoes and parts thereof; ski boots; rugby boots; rainshoes; sandals and beach shoes; beach shoes; mountaineering shoes; walking shoes; hockey shoes; handball shoes; golf footwear; football shoes; deck shoes; toe straps for japanese style wooden clogs; toe straps for japanese style sandals [zori]; tongues for shoes and boots; shoe covers, other than for medical purposes; galoshes; protective metal members for shoes and boots; fittings of metal for footwear; esparto shoes or sandals; footwear uppers; waders; cleats for attachment to sports shoes; studs for football boots; stiffeners for shoes; stiffeners for boots; slip-on shoes; leisure shoes; bath shoes; footwear for men; children's footwear; footwear for women; infants' footwear; flat shoes; footwear not for sports; shoe soles; slipper soles; footwear soles; pullstraps for shoes and boots; japanese toe-strap sandals (asaura-zori); pedicure sandals; zori; japanese style sandals of felt; japanese style sandals of leather; japanese style sandals (zori); bath sandals; sandals; ski boot bags; sandal-clogs; japanese style clogs and sandals; high rain clogs (ashida); japanese style wooden clogs (geta); low wooden clogs (komageta); low wooden clogs (hiyori-geta); wooden shoes; insoles for footwear; wooden main bodies of japanese style wooden clogs; leather slippers; metal fittings for japanese style wooden clogs; mules; valenki [felted boots]; welts for footwear; flip-flops; uppers for japanese style sandals; uppers of woven rattan for japanese style sandals; boot uppers; heels; heelpieces for footwear; wooden supports of japanese style wooden clogs; heel inserts; sports shoes; gymnastic shoes; bath slippers; soles for japanese style sandals; shoes soles for repair; insoles [for shoes and boots]; shoe inserts for non-orthopedic purposes; insoles; embossed heels of rubber or of plastic materials; intermediate soles; rubber soles for jikatabi; snowboard jackets; lingerie; neckwear; string fasteners for haori (haori-himo); articles of clothing for theatrical use; albs; bandanas [neckerchiefs]; bandeaux [clothing]; maternity bands; tennis sweatbands; neckbands; sweatbands; bustles for obi-knots (obiage-shin); playsuits [clothing]; puttees and gaiters; stockings; pajama bottoms; bottoms [clothing]; baby bottoms; tracksuit bottoms; sweat-absorbent stockings; baselayer bottoms; bibs, not of paper; cloth bibs; cloth bibs for adult diners; suspender belts for men; bra straps; braces for clothing [suspenders]; sweat bands for the wrist; hosiery; boleros; teddies [undergarments]; boas [necklets]; boas; shell jackets; motorcycle jackets; bomber jackets; blousons; gowns for doctors; nurse dresses; laboratory coats; maternity smocks; barber smocks; white coats for hospital use; overalls; coveralls; blazers; bikinis; bermuda shorts; plastic baby bibs; waist belts; sports caps and hats; cardigans; hoods [clothing]; shampoo capes; waterproof capes; capes; cloaks; corselets; long johns; bathing trunks; boxer shorts; pants; ski balaclavas; caftans; shoulder wraps [clothing]; dust coats; bathing suit cover-ups; neck tubes; camisoles; neck scarfs [mufflers]; pea coats; tube tops; burnouses; bustiers; shawls [from tricot only]; shawls and stoles; shawls and headscarves; shawls; sports socks; bed socks; anti-perspirant socks; sweat-absorbent socks; socks; wrist warmers; handwarmers [clothing]; chasubles; paper hats for use as clothing items; paper hats [clothing]; party hats [clothing]; footmuffs, not electrically heated; wrap belts for kimonos (datemaki); money belts [clothing]; sash bands for kimono (obi); belts made out of cloth; fabric belts [clothing]; belts made from imitation leather; leather belts [clothing]; cummerbunds; belts [clothing]; camiknickers; open-necked shirts; button down shirts; collared shirts; casual shirts; shirts for suits; fishing shirts; nighties; dress shirts; hunting shirts; camouflage shirts; shirts; desert boots; anglers' shoes; ballroom dancing shoes; slipper socks; water socks; thermal socks; footless socks; men's socks; trouser socks; socks and stockings; tennis socks; woollen socks; japanese style socks (tabi); coverups; roll necks [clothing]; one-piece playsuits; turtlenecks; collars for dresses; mock turtlenecks; shoulder wraps; footless tights; body stockings; woollen tights; maillots [hosiery]; athletic tights; tights; headdresses [veils]; oilskins [clothing]; cheongsams (chinese gowns); chemisettes; blouses; short-sleeve shirts; woven shirts; polo shirts; button-front aloha shirts; aloha shirts; shirts and slips; ramie shirts; corsets; corselets; tightening-up strings for kimonos (datejime); jumper suits; waist strings for kimonos (koshihimo); dry suits; one-piece suits; wetsuits for surface watersports; sunsuits; pram suits; baby bunting [clothing]; wet suits; waterproof suits for motorcyclists; flying suits; wet suits for surfing; snow boarding suits; ski suits for competition; wet suits for water-skiing; snow suits; wet suits for water-skiing and sub-aqua; wet suits for windsurfing; wind suits; nurse overalls; combinations [clothing]; slips [undergarments]; bib shorts; sliding shorts; crinolines; silk ties; bolo ties with precious metal tips; bolo ties; neckties; ear muffs [clothing]; bustle holder bands for obi (obiage); cagoules; cravats; zoot suits; three piece suits [clothing]; halloween costumes; costumes for use in role-playing games; men's suits; folk costumes; leather suits; theatrical costumes; evening suits; beach clothes; masquerade costumes; dance costumes; suits; foundation garments; sashes for wear; cowls [clothing]; costumes for use in children's dress up play; costumes; sports singlets; duffel coats; vest tops; down vests; jacket liners; ready-made linings [parts of clothing]; american football bibs; halter tops; soccer bibs; dress shields; denims [clothing]; tap pants; babies' pants [clothing]; pantaloons; gauchos; bloomers; panties; breeches; bib tights; cycling shorts; stoles; fur stoles; silk scarves; mufflers [clothing]; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; riding gloves; winter gloves; pantie-girdles; girdles; gabardines; shoulder scarves; neck scarves; head scarves; furs [clothing]; cashmere scarves; neckerchiefs; kerchiefs [clothing]; foulards [clothing articles]; scarfs; sock suspenders; detachable collars; detachable neckpieces for kimonos (haneri); short sets [clothing]; shirt yokes; gussets for tights [parts of clothing]; gussets for stockings [parts of clothing]; gussets [parts of clothing]; body warmers; fleece vests; quilted vests; korean traditional women's waistcoats [baeja]; leather waistcoats; athletics vests; hunting vests; camouflage vests; wind vests; gilets; vests; knee warmers [clothing]; gloves including those made of skin, hide or fur; gloves for cyclists; wetsuit gloves; knitted gloves; snowboard gloves; ski gloves; motorcycle gloves; driving gloves; camouflage gloves; gloves [clothing]; skirts; jodhpurs; jerseys [clothing]; denim jeans; stocking suspenders; morning coats; leg warmers; chaps (clothing); mackintoshes; rainproof clothing; fur cloaks; baselayer tops; baby tops; warm-up tops; tops [clothing]; cyclists' clothing; gaiters; donkey jackets; heavy jackets; rompers; gussets for underwear [parts of clothing]; gussets for footlets [parts of clothing]; gussets for bathing suits [parts of clothing]; gussets for leotards [parts of clothing]; underarm gussets [parts of clothing]; liveries; yashmaks; bed jackets; maternity lingerie; leggings [trousers]; layettes [clothing]; ascots; swaddling clothes; full-length kimonos (nagagi); kimonos; kilts; yashmaghs; snap crotch shirts for infants and toddlers; baby bodysuits; unitards; bodies [clothing]; leotards; petti-pants; short petticoats; petticoats; skorts; culotte skirts; pleated skirts for formal kimonos (hakama); tennis skirts; golf skirts; fur muffs; cuffs; boot cuffs; sleeveless jerseys; padded shirts for athletic use; sports jerseys and breeches for sports; volleyball jerseys; sports shirts with short sleeves; moisture-wicking sports shirts; sports jerseys; rugby tops; cycling tops; football jerseys; running vests; long sleeved vests; undershirts for kimonos (koshimaki); rash guards; undershirts; swimming trunks; swim wear for gentlemen and ladies; bathing costumes for women; maillots; fitted swimming costumes with bra cups; bathing suits; bathing suits for men; bowties; negligees; snowboard mittens; monokinis; arm warmers [clothing]; mittens; miniskirts; pop socks; eye masks; sleep masks; coats for women; fur coats and jackets; heavy coats; mantles; sheepskin coats; coats of denim; cotton coats; evening coats; raincoats; suit coats; winter coats; car coats; coats; maniples; muffs [clothing]; golf pants, shirts and skirts; stretch pants; trews; trousers of leather; slacks; yoga pants; dress pants; khakis; sweatpants; cargo pants; moisture-wicking sports pants; snowboard trousers; snow pants; nurse pants; golf trousers; hunting pants; camouflage pants; lounge pants; warm-up pants; short trousers; wind pants; walking breeches; pedal pushers; trousers; baby doll pyjamas; pelerines; rain ponchos; ponchos; polo knit tops; tennis shirts; fleeces; pocket squares; pockets for clothing; shirt fronts; pelisses; beach robes; lounging robes; bathrobes; robes; balaclavas; bath robes; parkas; korean topcoats [durumagi]; overcoats; trousers for children; padded pants for athletic use; waterproof trousers; sports pants; trousers shorts; corduroy trousers; replica football kits; jumper dresses; women's ceremonial dresses; choir robes; christening robes; ball gowns; sundresses; dresses; frock coats; pyjamas [from tricot only]; pajamas (am.); turtleneck sweaters; v-neck sweaters; mock turtleneck sweaters; tank tops; crew neck sweaters; polo sweaters; guernseys; sweaters; long sleeve pullovers; hooded pullovers; slipovers [clothing]; slipovers; tennis pullovers; pullovers; boardshorts; gym shorts; rugby shorts; sweat shorts; golf shorts; boxing shorts; trunks; shorts; boy shorts [underwear]; waist cinchers; knee-high stockings; sarongs; saris; bib overalls for hunting; salopettes; shortalls; bushjackets; hunting boot bags; ladies' dresses; dresses made from skins; muumuus; shift dresses; tennis dresses; wedding dresses; bridesmaid dresses; strapless bras; bralettes; moisture-wicking sports bras; sports bras; adhesive bras; brassieres; thermal underwear; men's underwear; babies' undergarments; disposable underwear; ladies' underwear; knitted underwear; union suits; sweat-absorbent underwear; underwear; undershirts for kimonos (juban); turtleneck shirts; mock turtleneck shirts; ankle socks; dinner jackets; dinner suits; underpants; padded shorts for athletic use; fleece shorts; tennis shorts; judo suits; short-sleeved or longsleeved t-shirts; short-sleeved t-shirts; printed t-shirts; yoga shirts; crop tops; tee-shirts; heelpieces for stockings; pantsuits; women's suits; skirt suits; paper aprons; plastic aprons; aprons [clothing]; tabards; pinafores; hooded sweatshirts; hooded tops; sweat shirts; shell suits; jockstraps [underwear]; gym suits; overshirts; over-trousers; thongs; tunics; knitwear [clothing]; knit shirts; togas; trench coats; combative sports uniforms; thobes; leisure suits; taekwondo suits; evening wear; formal evening wear; skating outfits; motorcycle riding suits; kendo outfits; karate suits; jogging sets [clothing]; formalwear; running suits; baseball uniforms; referees uniforms; martial arts uniforms; athletic uniforms; aikido suits; loungewear; ballet suits; jackets being sports clothing; sleeved jackets; sweatjackets; fishing vests; fishermen's jackets; jogging tops; hunting jackets; camouflage jackets; lumberjackets; riding jackets; korean outer jackets worn over basic garment [magoja]; warm-up jackets; windshirts; shirt-jacs; chefs' whites; jackets [clothing]; short overcoat for kimono (haori); stuff jackets [clothing]; uniforms for commercial use; school uniforms; sailor suits; uniforms for nurses; uniforms; twin sets; tutus; work clothes; windproof clothing; ready-made clothing; men's and women's jackets, coats, trousers, vests; sleeveless jackets; basic upper garment of korean traditional clothes [jeogori]; reversible jackets; light-reflecting jackets; safari jackets; coats for men; polar fleece jackets; quilted jackets [clothing]; long jackets; rainproof jackets; knit jackets; sheepskin jackets; fur jackets; down jackets; denim jackets; suede jackets; leather jackets; tracksuit tops; sports jackets; smoking jackets; ski jackets; motorcyclists' clothing of leather; leather clothing; cashmere clothing; leisurewear; triathlon clothing; surfwear; sports clothing [other than golf gloves]; sportswear; garments for protecting clothing; weatherproof clothing; rainwear; maternity sleepwear; figure skating clothing; japanese sleeping robes (nemaki); nightwear; clothing for gymnastics; maternity clothing; outerclothing; bridesmaids wear; dance clothing; clothing for horse-riding [other than riding hats]; outerclothing for men; outerclothing for girls; weather resistant outer clothing; womens' outerclothing; thermally insulated clothing; clothing for fishermen; clothing for martial arts; clothing for skiing; clothing for wear in judo practices; tennis wear; clothing for wear in wrestling games; infant wear; menswear; boys' clothing; girls' clothing; ladies' clothing; baby clothes; motorists' clothing; japanese traditional clothing; children's wear; sailing wet weather clothing; waterproof outerclothing; silk clothing; plush clothing; paper clothing; linen clothing; woolen clothing; clothing of imitations of leather; clothing made of fur; woven clothing; veils [clothing]; visors [headwear].

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 lining fabric for shoes; linen lining fabric for shoes are raw materials used in the manufacture of shoes. They have the same purpose as the opponent’s leather and leather imitations in Class 18, which could also be used for the manufacture of shoes. To that extent, they target the same relevant public and they are in competition. Therefore, they are similar.

The contested hat linings, of textile, in the piece refers to the inner or under surface of material stitched into the hat. It is considered dissimilar to the opponent’s goods in Classes 3 and 18, which include, inter alia, perfumery, soaps, cleaning preparations and goods of leather and imitations of leather. These goods have different natures and purposes and are distributed through different channels. They are neither complementary nor in competition. Furthermore, the contested hat linings, of textile, in the piece is dissimilar to the opponent’s clothing, footwear, headgear in Class 25. The mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (27/10/2005, T 336/03, Mobilix, EU:T:2005:379, § 61). These goods have different natures and purposes from those of the opponent’s, since they are mainly used in the manufacture of hats, they target different public and they are distributed through different channels. Furthermore, they are manufactured and provided by different undertakings.

Contested goods in Class 25

The contested application seeks protection for a broad range of goods which for the purposes of comparison can be grouped as follows:

• Headgear; footwear; clothing are identically contained in both lists of goods.

• Clothing, namely, snowboard jackets; lingerie; neckwear; articles of clothing for theatrical use; albs; bandanas [neckerchiefs]; bandeaux [clothing]; maternity bands; neckbands; playsuits [clothing]; puttees and gaiters; stockings; pajama bottoms; bottoms [clothing]; baby bottoms; tracksuit bottoms; sweat-absorbent stockings; base layer bottoms; bibs, not of paper; cloth bibs; cloth bibs for adult diners; suspender belts for men; bra straps; braces for clothing [suspenders]; sweat bands for the wrist; hosiery; boleros; teddies [undergarments]; boas [necklets]; boas; shell jackets; motorcycle jackets; bomber jackets; blousons; gowns for doctors; nurse dresses; laboratory coats; maternity smocks; barber smocks; white coats for hospital use; overalls; coveralls; blazers; bikinis; bermuda shorts; plastic baby bibs; waist belts; cardigans; hoods [clothing]; shampoo capes; waterproof capes; capes; cloaks; corselets; long johns; bathing trunks; boxer shorts; pants; caftans; shoulder wraps [clothing]; dust coats; bathing suit cover-ups; neck tubes; camisoles; neck scarfs [mufflers]; pea coats; tube tops; burnouses; bustiers; shawls [from tricot only]; shawls and stoles; shawls and headscarves; shawls; sports socks; bed socks; anti-perspirant socks; sweat-absorbent socks; socks; wrist warmers; handwarmers [clothing]; chasubles; wrap belts for kimonos (datemaki); money belts [clothing]; belts made out of cloth; fabric belts [clothing]; belts made from imitation leather; leather belts [clothing]; cummerbunds; belts [clothing]; camiknickers; open-necked shirts; button down shirts; collared shirts; casual shirts; shirts for suits; fishing shirts; nighties; dress shirts; hunting shirts; camouflage shirts; shirts; slipper socks;  water socks; thermal socks; footless socks; men's socks; trouser socks; socks and stockings; tennis socks; woollen socks; japanese style socks (tabi); coverups; roll necks [clothing]; one-piece playsuits; turtlenecks; collars for dresses; mock turtlenecks; shoulder wraps; footless tights; body stockings; woollen tights; maillots [hosiery]; athletic tights; tights; headdresses [veils]; oilskins [clothing]; cheongsams (chinese gowns); chemisettes; blouses; short-sleeve shirts; woven shirts; polo shirts; button-front aloha shirts; aloha shirts; shirts and slips; ramie shirts; corsets; corselets; jumper suits; dry suits; one-piece suits; wetsuits for surface watersports; sunsuits; pram suits; baby bunting [clothing]; wet suits; waterproof suits for motorcyclists; flying suits; wet suits for surfing; snow boarding suits; ski suits for competition; wet suits for water-skiing; snow suits; wet suits for water-skiing and sub-aqua; wet suits for windsurfing; wind suits; nurse overalls; combinations [clothing]; slips [undergarments]; bib shorts; sliding shorts; crinolines; silk ties; bolo ties with precious metal tips; bolo ties; neckties; ear muffs [clothing]; cagoules; cravats; zoot suits; three piece suits [clothing]; halloween costumes; costumes for use in role-playing games; men's suits; folk costumes; leather suits; theatrical costumes; evening suits; beach clothes; masquerade costumes; dance costumes; suits; foundation garments; sashes for wear; cowls [clothing]; costumes for use in children's dress up play; costumes; sports singlets; duffel coats; vest tops; down vests; jacket liners; american football bibs; halter tops; soccer bibs; denims [clothing]; tap pants; babies' pants [clothing]; pantaloons; gauchos; bloomers; panties; breeches; bib tights; cycling shorts; stoles; fur stoles; silk scarves; mufflers [clothing]; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; riding gloves; winter gloves; pantie-girdles; girdles; gabardines; shoulder scarves; neck scarves; head scarves; furs [clothing]; cashmere scarves; neckerchiefs; kerchiefs [clothing]; foulards [clothing articles]; scarfs; sock suspenders; detachable collars; detachable neckpieces for kimonos (haneri); short sets [clothing]; body warmers; fleece vests; quilted vests; korean traditional women's waistcoats [baeja]; leather waistcoats; athletics vests; hunting vests; camouflage vests; wind vests; gilets; vests; knee warmers [clothing]; gloves including those made of skin, hide or fur; gloves for cyclists; wetsuit gloves; knitted gloves; snowboard gloves; ski gloves; motorcycle gloves; driving gloves; camouflage gloves; gloves [clothing]; skirts; jodhpurs; jerseys [clothing]; denim jeans; stocking suspenders; morning coats; leg warmers; chaps (clothing); mackintoshes; rainproof clothing; fur cloaks; baselayer tops; baby tops; warm-up tops; tops [clothing]; cyclists' clothing; gaiters; donkey jackets; heavy jackets; rompers; liveries; bed jackets; maternity lingerie; leggings [trousers]; layettes [clothing]; ascots; swaddling clothes; full-length kimonos (nagagi); kimonos; kilts; yashmaghs; snap crotch shirts for infants and toddlers; baby bodysuits; unitards; bodies [clothing]; leotards; petti-pants; short petticoats; petticoats; skorts; culotte skirts; pleated skirts for formal kimonos (hakama); tennis skirts; golf skirts; fur muffs; cuffs; boot cuffs; sleeveless jerseys; padded shirts for athletic use; sports jerseys and breeches for sports; volleyball jerseys; sports shirts with short sleeves; moisture-wicking sports shirts; sports jerseys; rugby tops; cycling tops; football jerseys; running vests; long sleeved vests; undershirts for kimonos (koshimaki); rash guards; undershirts; swimming trunks; swim wear for gentlemen and ladies; bathing costumes for women; maillots; fitted swimming costumes with bra cups; bathing suits; bathing suits for men; bowties; negligees; snowboard mittens; monokinis; arm warmers [clothing]; mittens; miniskirts; pop socks; eye masks; sleep masks; coats for women; fur coats and jackets; heavy coats; mantles; sheepskin coats; coats of denim; cotton coats; evening coats; raincoats; suit coats; winter coats; car coats; coats; maniples; muffs [clothing]; golf pants, shirts and skirts; stretch pants; trews; trousers of leather; slacks; yoga pants; dress pants; khakis; sweatpants; cargo pants; moisture-wicking sports pants; snowboard trousers; snow pants; nurse pants; golf trousers; hunting pants; camouflage pants; lounge pants; warm-up pants; short trousers; wind pants; walking breeches; pedal pushers; trousers; baby doll pyjamas; pelerines; rain ponchos; ponchos; polo knit tops; tennis shirts; fleeces; pelisses; beach robes; lounging robes; bathrobes; robes; bath robes; parkas; korean topcoats [durumagi]; overcoats; trousers for children; padded pants for athletic use; waterproof trousers; sports pants; trousers shorts; corduroy trousers; replica football kits; jumper dresses; women's ceremonial dresses; choir robes; christening robes; ball gowns; sundresses; dresses; frock coats; pyjamas [from tricot only]; pajamas (am.); turtleneck sweaters; v-neck sweaters; mock turtleneck sweaters; tank tops; crew neck sweaters; polo sweaters; guernseys; sweaters; long sleeve pullovers; hooded pullovers; slipovers [clothing]; slipovers; tennis pullovers; pullovers; boardshorts; gym shorts; rugby shorts; sweat shorts; golf shorts; boxing shorts; trunks; shorts; boy shorts [underwear]; waist cinchers; knee-high stockings; sarongs; saris; bib overalls for hunting; salopettes; shortalls; bushjackets; ladies' dresses; dresses made from skins; muumuus; shift dresses; tennis dresses; wedding dresses; bridesmaid dresses; strapless bras; bralettes; moisture-wicking sports bras; sports bras; adhesive bras; brassieres; thermal underwear; men's underwear; babies' undergarments; disposable underwear; ladies' underwear; knitted underwear; union suits; sweat-absorbent underwear; underwear; undershirts for kimonos (juban); turtleneck shirts; mock turtleneck shirts; ankle socks; dinner jackets; dinner suits; underpants; padded shorts for athletic use; fleece shorts; tennis shorts; judo suits; short-sleeved or long-sleeved t-shirts; short-sleeved t-shirts; printed t-shirts; yoga shirts; crop tops; tee-shirts; pantsuits; women's suits; skirt suits; paper aprons; plastic aprons; aprons [clothing]; tabards; pinafores; hooded sweatshirts; hooded tops; sweat shirts; shell suits; jockstraps [underwear]; gym suits; overshirts; over-trousers; thongs; tunics; knitwear [clothing]; knit shirts; togas; trench coats; combative sports uniforms; thobes; leisure suits; taekwondo suits; evening wear; formal evening wear; skating outfits; motorcycle riding suits; kendo outfits; karate suits; jogging sets [clothing]; formalwear; running suits; baseball uniforms; referees uniforms; martial arts uniforms; athletic uniforms; aikido suits; loungewear; ballet suits; jackets being sports clothing; sleeved jackets; sweatjackets; fishing vests; fishermen's jackets; jogging tops; hunting jackets; camouflage jackets; lumberjackets; riding jackets; korean outer jackets worn over basic garment [magoja]; warm-up jackets; windshirts; shirt-jacs; chefs' whites; jackets [clothing]; short overcoat for kimono (haori); stuff jackets [clothing]; uniforms for commercial use; school uniforms; sailor suits; uniforms for nurses; uniforms; twin sets; tutus; work clothes; windproof clothing; ready-made clothing; men's and women's jackets, coats, trousers, vests; sleeveless jackets; basic upper garment of korean traditional clothes [jeogori]; reversible jackets; light-reflecting jackets; safari jackets; coats for men; polar fleece jackets; quilted jackets [clothing]; long jackets; rainproof jackets; knit jackets; sheepskin jackets; fur jackets; down jackets; denim jackets; suede jackets; leather jackets; tracksuit tops; sports jackets; smoking jackets; ski jackets; motorcyclists' clothing of leather; leather clothing; cashmere clothing; leisurewear; triathlon clothing; surfwear; sports clothing [other than golf gloves]; sportswear; garments for protecting clothing; weatherproof clothing; rainwear; maternity sleepwear; figure skating clothing; japanese sleeping robes (nemaki); nightwear; clothing for gymnastics; maternity clothing; outerclothing; bridesmaids wear; dance clothing; clothing for horse-riding [other than riding hats]; outerclothing for men; outerclothing for girls; weather resistant outer clothing; womens' outerclothing; thermally insulated clothing; clothing for fishermen; clothing for martial arts; clothing for skiing; clothing for wear in judo practices; tennis wear; clothing for wear in wrestling games; infant wear; menswear; boys' clothing; girls' clothing; ladies' clothing; baby clothes; motorists' clothing; japanese traditional clothing; children's wear; sailing wet weather clothing; waterproof outerclothing; silk clothing; plush clothing; paper clothing; linen clothing; woolen clothing; clothing of imitations of leather; clothing made of fur; woven clothing; veils [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

• Headwear, namely, hats; thermal headgear; head sweatbands; earbands; headbands [clothing]; fascinator hats; bonnets; bucket caps; bonnets [headwear]; bathing caps; shower caps; nightcaps; ski hats; waterpolo caps; tams; knitted caps; knot caps; bobble hats; berets; tam o'shanters; garrison caps; skull caps; boaters; sun hats; mantillas; top hats; wimples; fezzes; peaked headwear; children's headwear; millinery; sports headgear [other than helmets]; sedge hats (suge-gasa); paper hats for wear by nurses; paper hats for wear by chefs; woolly hats; fur hats; leather headwear; rain hats; beach hats; fashion hats; fedoras; sports caps; golf caps; flat caps; caps with visors; caps [headwear]; baseball caps; sun visors [headwear]; sun visors; turbans; chefs' hats; toques [hats]; small hats; miters [hats]; sports caps and hats; ski balaclavas; balaclavas; yashmaks; visors [headwear]; tennis sweatbands; sweatbands; paper hats for use as clothing items; paper hats [clothing]; party hats [clothing] are included in the broad category of the opponent’s headgear. Therefore, they are identical.

• Footwear, namely, snow boots; casual footwear; ballet slippers; sneakers; boots; pumps [footwear]; winter boots; riding shoes; work boots; mountaineering boots; rain boots; fishing boots; rubber fishing boots; ladies' boots; waterproof boots for fishing; army boots; polo boots; infants' boots; boots for motorcycling; booties; lace boots; shoe straps; high-heeled shoes; footwear [excluding orthopedic footwear]; dance shoes; cycling shoes; running shoes; tap shoes; hunting boots; work shoes; bowling shoes; boxing shoes; basketball sneakers; baseball shoes; climbing footwear; aqua shoes; athletic shoes; climbing boots [mountaineering boots]; shoes with hook and pile fastening tapes; pedicure slippers; women's foldable slippers; disposable slippers; bootees (woollen baby shoes); foam pedicure slippers; slippers; inner socks for footwear; rubbers [footwear]; japanese footwear of rice straw (waraji); gym boots; japanese split-toed work footwear (jikatabi); footwear made of vinyl; canvas shoes; leather shoes; volleyball shoes; yoga shoes; training shoes; tennis shoes; boots for sports; dress shoes; snowboard shoes; ski and snowboard shoes; ski boots; rugby boots; rainshoes; sandals and beach shoes; beach shoes; mountaineering shoes; walking shoes; hockey shoes; handball shoes; golf footwear; football shoes; deck shoes; galoshes; esparto shoes or sandals; waders; slip-on shoes; leisure shoes; bath shoes; footwear for men; children's footwear; footwear for women; infants' footwear; flat shoes; footwear not for sports; pullstraps for shoes and boots; japanese toe-strap sandals (asaura-zori); pedicure sandals; zori; japanese style sandals of felt; japanese style sandals of leather; japanese style sandals (zori); bath sandals; sandals; sandal-clogs; japanese style clogs and sandals; high rain clogs (ashida); japanese style wooden clogs (geta); low wooden clogs (koma-geta); low wooden clogs (hiyori-geta); wooden shoes; leather slippers; mules; valenki [felted boots]; flip-flops; sports shoes; gymnastic shoes; bath slippers; footmuffs, not electrically heated; desert boots; anglers' shoes; ballroom dancing shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

• Accessories of kimonos, namely, string fasteners for haori (haori-himo); bustles for obi-knots (obiage-shin); sash bands for kimono (obi); tightening-up strings for kimonos (datejime); waist strings for kimonos (koshihimo); bustle holder bands for obi (obiage) are articles which improve and enable the use of kimonos (which fall within the broad category of the opponent’s clothing in Class 25). As kimono accessories fulfil a useful technical or decorative purpose, it is common that they are also produced by the manufacturer of the main product. Consequently, the consumer may expect that the main product and the accessories are produced under the control of the same entity, especially as they are commonly distributed through the same channels of trade. These goods are similar.

• Fittings of football boots, namely, studs for football boots; cleats for attachment to sports shoes are complementary to the main product – football boots (falling within the broad category of the opponent’s footwear in Class 25). They are commonly offered for sale through the same commercial channels and target the same public. Furthermore, consumers would expect that the goods are manufactured by the same undertaking. Therefore, these goods are similar.

• Bags, namely, ski boot bags; hunting boot bags are also related to the opponent’s clothing in Class 25. This is because consumers are likely to co-ordinate the above contested goods with the outer clothing such as clothing for skiing, hunting and even consider them as accessories. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing for skiing, hunting to directly produce and market ski boot bags, hunting boot bags respectively. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

• Other parts of footwear, namely, insoles for footwear; insoles [for shoes and boots]; insoles; heel inserts; shoe inserts for non-orthopedic purposes; parts thereof (of ski and snowboard shoes) are complementary to the opponent’s footwear in Class 25. Consumers seek for such goods in the same sales outlets and expect them to be produced under the control of the same entity. These goods are similar. The contested shoe covers, other than for medical purposes are protective coverings for shoes or disposable coverings that fit over shoes and boots. These goods are similar to the opponent’s footwear in Class 25. The goods may be produced by the same companies, sold together in the same outlets and sold to the same end consumers.

• Parts of footwear, namely, rubber soles; shoe soles; slipper soles; footwear soles; soles for japanese style sandals; shoes soles for repair; intermediate soles; rubber soles for jikatabi are dissimilar to the opponent’s goods in Classes 3, 18 and 25, since they do not have the same distribution channels and are not targeted at the same end users. These parts are either bought by the manufacturers of articles of footwear to manufacture the end goods, or they are sold in shoe repair shops. These parts of footwear cannot be considered complementary to the opponent’s items of clothing, headgear and footwear, since they are not indispensable for the use of the other goods.

• Other parts of clothing, footwear or headgear, namely, hat frames [skeletons]; cap peaks; non-slipping devices for footwear; tips for footwear; toe straps for japanese style wooden clogs; toe straps for japanese style sandals [zori]; tongues for shoes and boots; fittings of metal for footwear; footwear uppers; stiffeners for shoes; stiffeners for boots; metal fittings for japanese style wooden clogs; welts for footwear; uppers for japanese style sandals; uppers of woven rattan for japanese style sandals; boot uppers; heels; heelpieces for footwear; embossed heels of rubber or of plastic materials; wooden supports of japanese style wooden clogs; ready-made linings [parts of clothing]; gussets for tights [parts of clothing]; gussets for stockings [parts of clothing]; gussets [parts of clothing]; gussets for underwear [parts of clothing]; gussets for footlets [parts of clothing]; gussets for bathing suits [parts of clothing]; gussets for leotards [parts of clothing]; underarm gussets [parts of clothing]; dress shields; shirt yokes; pocket squares; pockets for clothing; shirt fronts; heelpieces for stockings; wooden main bodies of japanese style wooden clogs; toe boxes; protective metal members for shoes and boots are components which are used for specific purposes (for instance protective shields applied to garments against perspiration stains), and as fittings or spare parts for the main products (for instance pockets for renovating old garments or altering the appearance thereof, components of hats and shoes that are replaced by specialists rather on a do-it-yourself basis). Despite the fact that some of the goods can be directed at the same public and sometimes found in the same distribution channels as the opponent’s goods (e.g. dress shields vs. the opponent’s clothing in Class 25) these factors are not sufficient for a finding of similarity. The rest of the abovementioned goods do not commonly move through the same channels of trade and are directed at specialist circles, such as cobblers and hat makers. Consumers would not expect that the contested goods are manufactured by the same undertakings as the opponent’s goods. Given the clearly different natures, methods of use and the fact that these goods are neither strictly complementary nor in competition, they are considered dissimilar to the opponent’s goods in Class 25. With respect to the other goods covered by the earlier mark in Classes 3 and 18 it is noted that the abovementioned contested goods have nothing relevant in common with them. The mere fact that some parts of footwear can be made of leather or imitation leather is not in itself sufficient for rendering the goods similar, as the distribution channels and manufacturers would be different. Furthermore, the goods are neither complementary nor in competition with each other. The nature of these goods is very different from that of the opponent’s goods. They do not usually have the same retail outlets and they are usually not made by the same manufacturers. Therefore, the abovementioned contested goods are dissimilar to all of the opponent’s goods in Classes 3, 18 and 25.

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

	VAGABOND IN PARADISE
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 ‘VAGABOND’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier sign is a figurative mark, which consists of the words ‘VAGABOND SHOEMAKERS’ written over two lines. The word element ‘VAGABOND’ is written in bold upper case letters in black. Below the word ‘VAGABOND’, and considerably smaller, is depicted the word ‘SHOEMAKERS’, written in standard upper case letters in black. The verbal element ‘VAGABOND’ of the earlier mark, by virtue of its central position and size, is considered more dominant (visually eye-catching) than the other elements of this figurative sign.

The contested sign is a word mark, consisting of the expression ‘VAGABOND IN PARADISE’; it has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to determine the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.

The word ‘VAGABOND’, included in both signs, will be perceived by the relevant public as referring to a person who wanders from place to place without a home or job (information extracted from Oxford English Dictionary on 20/04/2017 at https://en.oxforddictionaries.com/definition/us/vagabond). This word is not descriptive or otherwise weak in relation to the relevant goods and is therefore distinctive.

The word ‘SHOEMAKERS’ will be understood by the relevant public as a person who makes shoes and other footwear as a profession (information extracted from Oxford English Dictionary on 20/04/2017 at https://en.oxforddictionaries.com/definition/us/shoemaker). Bearing in mind that some of the relevant goods are footwear, this element is non-distinctive for some of these goods, such as rainshoes, sports shoes, gymnastic shoes, since it could be perceived as a direct reference to the kind of the goods. Therefore, the relevant public will not pay as much attention to this element as to the other, more distinctive, elements of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

The opponent argues that the expression ‘IN PARADISE’ will be perceived by the relevant public as a simple qualifier for the word ‘VAGABOND’ and, as such, it will not be considered as a distinctive element of the overall impression. However, the Opposition Division notes that the expression ‘IN PARADISE’ will be understood by the English-speaking part of the public as, inter alia, an idyllic place or condition that fulfils all one’s desires or aspirations; that concept has no clear meaning in relation to the goods at issue and therefore has a normal degree of distinctiveness.

Visually, the signs coincide in the word ‘VAGABOND’. However, they differ in the second word contained in the earlier mark, ‘SHOEMAKERS’, as well as in the additional words, ‘IN PARADISE’, of the contested sign. They also differ in the slight stylisation of the earlier mark.

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.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘VAGABOND’, present in both signs as a separate and identifiable word. The pronunciation differs in the sound of the second word in the earlier mark, ‘SHOEMAKERS’, and in the pronunciation of the additional words ‘IN PARADISE’ of the contested sign, which have no respective counterparts. Nevertheless, given its diminutive size and non-distinctive character, it is likely that the majority of the relevant consumers will not pronounce the word ‘SHOEMAKERS’ when referring to the contested sign verbally.

Therefore, 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. The word ‘SHOEMAKERS’ of the earlier mark is non-distinctive for part of the goods for the relevant public.

As the signs will be associated with the same concept of ‘VAGABOND’, they 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.

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.

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 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, despite the presence of a non-distinctive element in the mark (for part of the goods) as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the Court of Justice’s case law, the risk that the public might believe that

the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, §29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, §17).

The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §22; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, §18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods 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).

The global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarities between the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) EUTMR, ‘...there exists a likelihood of confusion on the part of the public...’, shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. Average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, since they rarely have the chance to make a direct comparison.

The goods are partly identical, partly similar and partly dissimilar. The degree of attention of the relevant public is average and the earlier mark has a normal degree of distinctiveness.

The marks are visually, aurally and conceptually similar to an average degree. The first parts of the conflicting marks are identical, as they coincide in the word ‘VAGABOND’, which has a normal degree of distinctiveness. As mentioned above in section c) of this decision, account should be taken of the fact that the relevant public reads from left to right and from top to bottom. Consequently, the coinciding word, ‘VAGABOND’, which plays an independent distinctive role in both signs, is portrayed in the initial and, therefore, most conspicuous part of the marks, and will be the part that first catches the consumer’s attention.

As regards the additional word, ‘SHOEMAKERS’, of the earlier mark, as seen above in section c) of this decision, the relevant public will promptly grasp the meaning of this word and will not pay particular attention to it, as it is non-distinctive in relation to some of the goods at issue. This word may not be pronounced by consumers referring to the sign verbally due to its size, positioning and descriptive meaning. Therefore, consumers will more readily focus on and pronounce the dominant word ‘VAGABOND’ of the earlier mark.

The additional words ‘IN PARADISE’, in the contested sign are not sufficient to counteract the abovementioned visual, aural and conceptual similarities.

It is common for undertakings active on the market to use sub-brands – that is to say, signs that derive from a principal mark and have an element in common – to distinguish the scope of one product or service from that of another. It is, therefore, conceivable that the target public, even if it does not directly confuse the signs, may still regard the identical or similar goods designated by the conflicting signs as product lines that come from the same undertaking or economically linked undertakings. In the present case, consumers may legitimately believe that the contested sign, ‘VAGABOND IN PARADISE’, is a new brand line or a recent development under the opponent’s mark, ‘VAGABOND SHOEMAKERS’. In other words, consumers may confuse the origins of the goods found to be identical or similar, assuming that they come from the same undertaking or from economically linked undertakings.

Considering all the above and emphasising, in particular, the fact that the first parts of the conflicting marks are identical, and that consumers only rarely have the opportunity to compare signs side by side but must instead rely on their imperfect recollection of them, 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. 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 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.

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

Francesca CANGERI SERRANO

José Antonio GARRIDO OTAOLA

Andrea VALISA

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.