Vossen Group | Decision 2642794 - Linz Textil Holding AG v. Karreveld Holding B.V.

Date Published: Oct 1, 2017

OPPOSITION No B 2 642 794

Linz Textil Holding AG, Wiener Str. 435, 4030 Linz, Austria (opponent), represented by Foglar-Deinhardstein KG, Plankengasse 7, 1010 Wien, Austria (professional representative)

a g a i n s t

Karreveld Holding B.V., Karreveld 4, 6089NC Heibloem, gemeente Leudal, Netherlands (applicant), represented by Kantoor Mr. Baten B.V., Eendenven 12 5646 JN Einhoven, Netherlands (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 642 794 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 693 089, namely against goods and services in Classes 1, 5, 7, 29, 31, 35, 36, 42 and 44. The opposition is based on European Union trade mark registrations No 3 998 325 and No 725 937. The opponent invoked Article 8(5) EUTMR.

EUTM No 3 998 325 VOSSEN EUTM No 725 937
Earlier trade marks	Contested sign

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a high reputation in Austria and Germany.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 19/10/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Austria and Germany prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 24:        Textiles, bed and table linen of textile, curtains, covers, bed blankets, bed spreads, non-woven materials and linings of natural and artificial fibres, hand towels, bath towels, face towels, washing mitts, household linen.

Class 25:        Clothing, underwear, woven and knitted clothing, in particular swimwear, night clothing and pyjamas, house coats and bath robes, smocks, house coats, bathing wear and dressing gowns.

Class 27:        Carpets, mats, bathroom carpets and bath mats.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 07/06/2017 the opponent submitted the following evidence:

• Market research study in Germany commissioned by the opponent to the institute ‘GfK-Marktforschung’ with the topic ‘Towels, bath towels, bath ropes’. The study was realised between March and April 2008 and a sample of 2 024 people was taken. A percentage of 15.66% of those surveyed named the earlier marks as a brand which they connect with towels, bath towels or bathrobes, even if in name only. Showing to the respondents four marks, 33% of the people were familiar with the mark ‘Vossen’: 643 people, namely 31.8% of the sample, stated that the mark ‘Vossen’ was well known to them.
• Contact list with distributors of goods ‘VOSSEN’ in countries of the European Union such as Austria, Germany, Denmark, United Kingdom, Poland, Italy, Netherlands and Belgium: this document seems to be extracted from the opponent’s website but is not dated;
• Copy of the delivery conditions (with its translations into English) of the online shop for ‘Vossen’ products (https://shop.vossen.com). The goods are delivered to Belgium, the Netherlands, Slovakia, Spain, Estonia, Finland, France, Ireland, Luxembourg, Germany and Austria: This document is dated 31/05/2016, namely more than seven months after the filing date of the contested trade mark;
• Mention is made in the opponent’s observations about the use of Social Media Channels such as https://www.facebook.com/vossentowels/;
• Advertisement launched in spring 2015 in DIVA, an Austrian magazine for fashion, beauty and luxury including, according to the opponent, ‘an interview with the managing director Paul Mohr about the success of Austrian’s cult label ‘Vossen’: No translation of this document into the language of proceedings, namely into English, has been provided;
• Advertisements of 2015 and 2016 in the German magazine ‘Laura wohnen kreativ’ and in the Austrian Society-Magazine ‘Seitenblicke’: Advertisement of 2013 and 2014 in the German catalogue ‘Erwin-Müller’, in ‘Kronen Zeitung’, an Austrian daily newspaper: The goods are bath towels and bath rope: The earlier mark mainly appears as registered or in a verbal form; it can be read one phrase in English, namely ‘Vossen wishes you nice holidays’: in another advertisement, readers are asked to send their holiday pictures on Instagram, Twitter or Facebook in order to have the chance to win 5 sets of towels presented by ‘Vossen’;
• Advertisement in what seems to be a catalogue. According to the opponent, it is a promotional offer by ÖAMTC (Austrian Automobile, Motorcycle and Touring Club) for terry products ‘Vossen’ free of charge for ÖAMTC members: however, this information is not evidenced by the document: this document is not dated;
• Article, according to the opponent, in the German magazine ‘Spiegel’ about ‘Vossen’: the title is ‘Energie tanken mit Vossen’: this article is not translated and not dated: According to the opponent, it is dated in March 2016, namely after the filing date of the contested trade mark;
• Article in the German magazine Haustex which is, according to the opponent, Europe’s leading magazine for beds, bedding, mattresses and bed linen; The document has not been translated and is dated in February 2016, namely after the filing date of the contested trade mark;
• Online-Sale at the homepage of BIPA, one of Austria’s biggest drugstores. The goods ‘Vossen’ are bath towels, bath rope and bath rugs. This document is dated on 01/06/2016, namely after the filing date of the contested trade mark;
• Extract of the information available in German in https:/de.wikipedia.org about Burghard Vossen, part of which is translated in English as follows: ‘Burghard Vossen (born 21st Dec 1894 in Gütersloh, died 4th July 1981 in Gütersloh) was a German textile manufacturer and founder of the company Vossen GmbH & Co’.

The principal item of evidence filed by the opponent with a view to prove the reputation of the earlier marks is the market research study. Although some documents help to establish that the earlier mark has been used in Germany and Austria, as such they do not give any sufficient information to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public, the market share held by the mark, the position it occupies in the relevant markets in relation to competitors’ goods, the extent of its use or the extent to which it was promoted.

Despite providing certain indications on the degree of recognition of the earlier trade mark by the relevant public, the market research study in Germany commissioned to the institute ‘GfK-Marktforschung’ with the topic ‘Towels, bath towels, bath ropes’ is dated in April 2008, that is seven years and a half prior to the filing date of the contested EUTM. The closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date.

However, it must be noted that it will be sufficient for the opponent to show that its mark already had a reputation on the filing/priority date of the EUTM application, while any subsequent loss of reputation is for the applicant to claim and prove. In practice, such an occurrence will be rather exceptional, since it presupposes a dramatic change of market conditions over a relatively short period of time.

On the other hand, as a rule, the higher the percentage of trade mark awareness, the easier it will be to accept that the mark has a reputation. However, in the absence of a clear threshold, only if the evidence shows a high degree of trade mark awareness, will percentages of recognition be persuasive. Percentages alone are not conclusive. Rather, as explained before, reputation has to be evaluated by making an overall assessment of all the factors relevant to the case. The higher the degree of awareness, the less additional evidence may be required to prove reputation and vice versa.

In the present case, the figures of the study do not show that the reputation of the earlier mark in Germany was particularly high in 2008. On the contrary, only 15.66% of the people surveyed spontaneously named the earlier mark in relation to towels, bath towels or bathrobes. With the assistance of the name of four marks, including the earlier mark, 33% of the people were familiar with the mark ‘Vossen’ and 643 people, namely 31.8% of the sample, stated that the earlier mark was well known to them.

Furthermore, the evidence should be assessed as a whole, that is, each indication should be weighed up against the others, whereas information confirmed by more than one source will generally be more reliable than facts derived from isolated references. At least, the Opposition Division should be able to infer from other items of evidence that the public recognition indicated in the GfK market research study has been maintained or increased until the filing date of the contested EUTMA because of an intensive use of the earlier mark. However, the list of distributors, the delivery conditions of the online shop, the advertisements, the articles, the information about the founder of the company Vossen GmbH & Co and even the presence of the mark in the website of ‘BIPA’ give insufficient information concerning the extent of use and the reputation of the mark as could do figures of sales from independent and/or official sources, market share or promotional expenses. The only reference to the volume of production is done by the opponent in its observations in which it states that it produces over 6 million high quality products – e.g. towels, bathrobes and bath mats – each and every year. This statement is not supported by any official and/or independent document. The mere appearance of the trade mark on websites, social networks, in advertisements or articles does not allow any conclusion regarding the level of awareness of the trade mark among the relevant public in Germany or Austria, all the more so as a substantial part of the evidence is not dated, is dated after the filing date of the contested EUTMA or is not translated.

As regards the advertisements, it must be borne in mind that promotional activities will usually not be sufficient on their own to establish that the earlier mark has indeed acquired a reputation. It is difficult to prove knowledge amongst a significant part of the public exclusively by reference to promotion or advertising, as the actual impact of publicity on the perception of the public will be difficult to measure without valid reference to sales.

In the present case, despite being voluminous, the evidence does not provide reliable information on the extent of the use of the earlier mark in the relevant territories nor does it give sufficient indication of the degree of recognition of the trade mark by the relevant consumers.

As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Adriana VAN ROODEN

Benoit VLEMINCQ

Boyana NAYDENOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.