Whyte | Decision 2656380
Date Published: Sep 22, 2017
OPPOSITION No B 2 656 380
The White Company (UK) Limited, 1 Derry Street, London, W8 5HY, United Kingdom (opponent), represented by Dechert LLP, 160 Queen Victoria Street, London EC4V 4QQ, United Kingdom (professional representative)
a g a i n s t
Graebert isurvey FZ LLC, Dubai Internet City Building 14 office 215 Dubai 75870, United Arab Emirates (applicant), represented by Boehmert Boehmert Anwaltspartnerschaft Mbb - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin Germany (professional representative).
On 05/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 656 380 is upheld for all the contested goods.
2. European Union trade mark application No 14 684 741 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 684 741 for the word mark ‘Whyte’.
The opposition is based on, European Union trade mark registration No 2 788 578 for the word mark ‘THE WHITE COMPANY’. The opponent invoked Article 8(1)(b) and Article 8(5) and in relation to another earlier right, namely the non-registered trade mark in the UK ‘THE WHITE COMPANY’, the opponent also invoked Article 8(4) EUTMR.
PROOF OF USE
For reasons of procedural economy, the Opposition division will focus on the proof of use of European Union trade mark registration No 2 788 578.
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 09/11/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 09/11/2010 to 08/11/2015 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:
Class 3: Soaps; perfumery, essential oils, cosmetics, and toiletries; incense.
Class 4: Candles, wicks and lamp oil.
Class 8: Hand tools and implements; cutlery; razors, cutlery.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; napkins rings; jewellery, precious stones; horological and chronometric instruments.
Class 16: Writing paper, photographs; stationery; printed publications, catalogues, calendars, tags and labels; packaging materials.
Class18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas, parasols and walking sticks; leather desk sets and office sets.
Class 20: Furniture, mirrors, and picture frames, photoframes.
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; unworked or semi-worked glass; glassware, porcelain and earthenware; crockery.
Class 24: Textiles and textile goods; bed and table ware; cushions, curtains and rugs.
Class 25: Clothing; footwear; headgear.
Class 27: Carpets, rugs, mats and matting, wall hangings.
Class 28: Games and playthings; decorations for Christmas trees; soft toys.
Class 35: Retail services; retail services provided via a mail order catalogue, or provided over the Internet; retail of toiletries and cosmetics, candles and incense, hand tools and implements, cutleries and razors, goods of precious metals and their alloys, photo frames, napkin rings and cutlery, jewellery and precious stones, horological and chromomeric instruments, writing paper, photographs; stationery, goods of leather and imitation leather, trunks and travelling bags, umbrellas, furniture, mirrors and picture frames, household and kitchen utensils and containers, combs and sponges, brushes, goods of unworked or semi-worked glass, glassware, porcelain and earthenware, crockery, textiles and textile goods, bed and table ware; cushions, curtains and rugs, clothing, footwear, headgear, carpets, rugs, mats and matting, wall-hangings, games and playthings, decorations for Christmas trees, soft toys.
Class 39: Wrapping; packaging, storage and delivery of goods.
Class 45: Wedding list and gift list services.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 25/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/12/2016 to submit evidence of use of the earlier trade mark. This period was extended. On 27/02/2017, within the relevant period, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Exhibit 1: Witness statement signed on 27/02/2017 by Paul Kavanagh, Partner and solicitor at Dechert LLP (the opponent), who provides an overview of the sales and marketing activities of the company from 2010 to 2016. The witness statement also states that the earlier trade mark, ‘THE WHITE COMPANY’, has acquired a reputation and has been used as a trade mark for all the relevant goods and services. The witness statement also includes a table summarising the turnover sold during the relevant period in the UK.
Exhibits 2, 3, 5, 7 and 8: Internet extracts from the opponents website. It mentions several store locations in the UK, and that the opponent “has been making designer-quality products for over 21 years”. The other extracts relate to international delivery shop, it mentions several countries of the EU, also it mentions the opponent´s founder, its history over the years (including the relevant period) and collections. The extracts includes goods such as plain sheets, duvet, pillows, towels, bathrobe, nightwear, home scents, beds and furniture. There is an online catalogue from Facebook´s publicity selling clothing for babies, bed linen. There are also extracts from Twitter and Instagram pages.
Exhibit 4: Screenshots from the website fasttrack.co.uk, the opponents mark appears on it together with the years 1999, 2010, 2015 and 2016.
Exhibit 6: Press articles titled “The White Company sales jump 24pc over Christmas”, and “known for its white clothing, bed linen and moccasins”. The article is dated 4 January 2011. The other article is titled “White Company lays foundation for growth”, dated December 2012, and states “sales of cashmere jumpers and bed linen”. Article titled “ £3m bonus for White Company chiefs”, dated December 2013, “the White Company poised to launch into US next year” also dated December 2013, “Gloucester Quays outlet urged to do everything to keep the White Company business open”, dated January 2014 and “M1 Retail Concepts Lebanon SAL opens The White Company at Beirut City Centre” dated November 2014.
Exhibit 9, 10, 11. 12, 13, 14, 15, 16 and 17: Compilation of product catalogues from the website www.thewhitecompany.com dated 2011, 2012, 2013 and 2015 referring to the earlier mark in connection to several goods such as tableware, Christmas decoration, lamps, decorative accessories for the house, scents, upholstered furniture, bathrobe, clothing, footwear, bed linen, cushions, feather pad, bed sheets, towels, bath sheets, mats, tableware, candles, cosmetics, handmade glass, wine glasses, decorative goods for tables, mirrored tablemats, mirrors, mattress, sofa, chairs, picture frames and nesting baskets.
The internet extracts and the press articles show that the place of use is the United Kingdom. This can be inferred from the language of the documents (‘English’) and the currency mentioned (‘pound sterling’). Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed, namely the witness statement, brochures, catalogues, press material, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.
As regards the extent of the use made of the earlier mark, although the opponent did not submit invoices or other evidence attesting sales figures, a large number of press clippings, constituting sources of independent information, as well as catalogues with a large number of items offered under the earlier mark and advertising in the press demonstrated that that trade mark had been the subject of real and genuine commercial exploitation on the market during the relevant period.
The evidence shows that the mark has been used as registered.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In the present case the evidence shows genuine use of the trade mark for, amongst others, the following goods:
Class 20: Furniture, mirrors, and picture frames.
Class 24: Bed and table ware; cushions.
Class 27: Carpets, mats.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are the following:
Class 20: Furniture, mirrors, and picture frames.
Class 24: Bed and table ware; cushions.
Class 27: Carpets, mats.
The contested goods are the following:
Class 20: Beds, Picture frames, Mirrors (silvered glass), Upholstered furniture, Furniture of wood, Cork, teed, rush, Wicker, Horn, Bone, Ivory, Whalebones, Oyster shells, Yellow amber, Mother-of-pearl, Meerschaum and substitutes for all these materials, or of plastics.
Class 24: Textiles, bed and table linen of textile, curtains, covers, bed blankets, bedspreads, non-woven fabrics and linings of natural and artificial fibres, towels, bath towels, face cloths, washing mitts, household linen.
Class 27: Carpets, mats and matting, bathroom carpets and bath mats.
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 20
Picture frames, mirrors (silvered glass) are identically contained in both lists of goods.
The contested beds, upholstered furniture, furniture of wood, cork, teed, rush, wicker, horn, bone, ivory, whalebones, oyster shells, yellow amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics are included in the broad category of the opponent’s furniture. Therefore, they are identical.
Contested goods in Class 24
Bed and table linen of textile, covers, bed blankets, bedspreads and linings of natural and artificial fibres, are identical to the opponent’s bed and table ware.
The contested curtains, towels, bath towels, face cloths, washing mitts, household linen are similar to the opponent’s bed ware in Class 24 as they have the same nature. They can coincide in producer, end user and distribution channels.
Textiles and non-woven fabrics and the opponent´s bed ware are similar to a low degree to the opponent’s bed blankets which are commonly manufactured from textiles and non-woven fabrics such as felt, and the degree of transformation from material to end product is often low. The goods at issue have the same nature. Furthermore, they are directed at the same consumers and are offered through the same commercial channels.
Contested goods in Class 27
Carpets, mats are identically contained in both lists of goods.
The contested bathroom carpets and bath mats are included respectively in the broad categories of the opponent’s carpets, mats. Therefore, they are identical.
The contested matting overlap with the opponent´s mats, there is therefore, identity between these goods.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical and similar to different degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention will be average.
- The signs
THE WHITE COMPANY | Whyte |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The elements ‘WHITE’ and ‘Whyte’ are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish and French-speaking part of the public,
The definite article ‘THE’ in the opponent’s sign could be seen as a banal element. Furthermore, Spanish and French consumers will understand it, since it is a common and basic English word denoting the definite article. For this reason, it is largely lacking in distinctive character.
The word ‘COMPANY’ of the earlier mark is part of the basic English vocabulary and will be understood by the relevant public and associated with the legal form of the opponent, namely a business enterprise. This word is non-distinctive for all the goods.
The most distinctive element of the earlier mark is therefore, WHITE.
The contested sign ‘whyte’, has no meaning for the relevant goods, therefore is distinctive.
It must be recalled that the lower-case and upper-case letters used in the contested sign and earlier mark, respectively, do not have any impact on the assessment of the signs’ similarity since the signs are word marks and, thus, their protection relates to the respective word elements and not to the specific figurative or stylistic elements which the marks might have (21/09/2012, T-278/10, Western Gold, EU:T:2012:1257, § 44, 46).
Visually and aurally, the signs coincide in the fact that the most distinctive element of the earlier mark ‘WHITE’ and the contested sign ‘Whyte’ share four out of five letters. The only difference is the letter ‘I’ versus ‘y’, phonetically this does not affect the identity between [WHITE] and [WHYTE].
Therefore, the signs are similar to an average degree.
Conceptually, the public in the relevant territory will perceive the earlier mark as the name of a company called ‘THE WHITE’, whereas the contested sign (‘whyte’) has no meaning at all. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
It has been established that the goods are partially identical and partially similar to different degrees.
The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17). In the present case, the low degree of similarity between some of the goods, together with the degree of visual and aural similarity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The opponents word element ‘WHITE’, which represents the most distinctive element of the sign, is almost identical to the contested sign. The minor modifications in spelling between ‘WHITE’ and ‘WHYTE’ do not alter the visual impression of the marks on the relevant public and the pronunciation will be identical in French and Spanish.
Considering all the above, there is a likelihood of confusion on the part of the Spanish and French-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 788 578. It follows that the contested sign must be rejected for all the contested goods. This conclusion furthermore stands for the contested goods which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods which only have a low degree of similarity.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right European Union trade mark registration No 2 788 578 leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and Article 8(5) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Mark KING | Birgit FILTENBORG | Francesca CANGERI SERRANO |
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.