Trade Mark Inter Partes Decision (O/360/13)
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O-360-13 TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NO 2617595 BY RAHMEL ORLEBAR TO REGISTER THE TRADE MARK IN CLASS 25 AND IN THE MATTER OF OPPOSITION THERETO UNDER NO 103735 BY HUGO BOSS TRADEMARK MANAGEMENT GmbH & Co KG Background 1. On 13 April 2012, Rahmel Orlebar (“the applicant”) applied to register the trade mark shown on the front page of this decision in respect of the following goods in Class 25: clothing, headwear, footwear. The application was examined and accepted and subsequently published for opposition purposes on 25 May 2012. 2. On 24 August 2012, Hugo Boss Trademark Management GmbH & Co KG (“the opponent”) filed a notice of opposition against the application. The grounds of opposition are founded on sections 5(2)(b), 5(3) and 5(4)(a) of the Act. In relation to its opposition on grounds under section 5(2) and 5(3), the opponent relies on the following: Mark Dates Specification of goods UK:1198781 Filing date: Class 25 1 July 1983 Articles of clothing for men; but not including gloves or BOSS Date of entry in any goods of the same description as gloves. register: 26 September 1988 International mark: International Class 25 456092 Registration date: Clothing (including knitted garments and garments of 9 October 1980 knitted fabrics) for women, men and children; hoses; Date of protection clothing accessories, particularly shawls, bandannas, in the UK: foulards, shoulder wraps, stoles and handkerchieves as 7 August 2005 clothing accessories; neckties, belts, headwear; footwear International mark: International Class 9 773035 registration date: Eyewear and parts thereof, but not including goggles for 16 August 2001 use in shooting and similar goods to goggles for use in Date of protection shooting. in the UK: 3 October 2004 Class 14 Clocks and watches, jewellery. Class 18 Goods made of leather and leather imitations (included in this class); belts made of textile or plastic materials, suitcases and bags, umbrellas and parasols. Class 24 Table linen and bed linen, woven fabrics, curtains, bathroom textiles, namely towels; handkerchiefs made of textile material. Class 25 Articles of clothing for ladies, gentlemen and children, especially suits, coats, jackets, trousers, shirts, raincoats, outer garments and underwear, socks, stockings, tricots, pullovers, knitted shirts; footwear and head coverings, ties, gloves, belts, braces, bathrobes. Class 28 Gymnastic and sports equipment; balls. Class 34 Tobacco products, lighters. Page 2 of 13 3. In respect of its opposition based on section 5(4)(a) of the Act, the opponent relies on use of the sign BOSS in the UK since 1988 in respect of clothing, footwear and headwear. 4. The applicant filed his first counterstatement on 2 October 2012 but was invited to further particularise the extent to which he admitted or denied the grounds of opposition. This led to a second counterstatement being filed by him on 1 November 2012. Under cover of a letter dated 5 January 2013, the applicant filed a third counterstatement which, he explained, had been prepared with the assistance of a legally qualified, but unidentified, person. Whilst each of the separate counterstatements varies greatly, the end result is that the applicant essentially denies each of the grounds of opposition. 5. Both parties filed both evidence and written submissions and neither sought to be heard. I therefore give this decision after a careful review of all of the written material before me and will refer to it as necessary. The objection under section 5(2)(b) of the Act 6. I turn first to the ground of opposition based on section 5(2)(b) of the Act which reads: 5.-(2) A trade mark shall not be registered if because - (a) ..... (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.” 7. An “earlier trade mark” is defined in section 6, the relevant part of which states: “6.-(1) In this Act an "earlier trade mark" means - (a) a registered trade mark, international trade mark (UK) or Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks.” 8. I set out above the three marks relied on by the opponent under this ground, each of which is an earlier trade mark as set out in section 6 of the Act. In his first counterstatement, the applicant indicated he did not put the opponent to proof of use of its earlier marks whereas in his second counterstatement, he indicated he did put them to such proof. In his third counterstatement he refers to the following claim made by the opponent in its notice of opposition that the earlier trade marks on which it relies: Page 3 of 13 “have an extensive reputation throughout the United Kingdom in relation to the items of clothing, footwear and headwear for which the marks are registered. As one of the world’s leading fashion houses, the Opponent is particularly well-known (under its earlier trade marks) for high quality luxury clothing, footwear and headgear”. and indicates that he admits this claim. In view of this admittance, I proceed on the basis that the opponent is not put to proof of use of its marks insofar as they are registered for goods in class 25. 9. Whilst the opponent relies on three earlier marks, each is for the word BOSS. Whilst each is presented in a slightly different typeface, there is nothing particularly remarkable about them and each is, essentially, a word presented in plain block capitals. I therefore intend to consider the objection on this ground on the basis of earlier international mark 456092 as if the opponent cannot succeed in respect of this mark it will be in no stronger position in relation to the other two earlier marks on which it relies. 10. In considering the objection under section 5(2) and the likelihood of confusion between the respective marks, I take into account the guidance from the settled case law provided by the CJEU in Sabel BV v Puma AG [1998] RPC 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R. 77 and Marca Mode CV v Adidas AG & Adidas Benelux BV [2000] E.T.M.R. 723, Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH C-120/04 and Shaker di L. Laudato & C. Sas v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) C-334/05 P (LIMONCELLO). In the recent case of La Chemise Lacoste SA v Baker Street Clothing Ltd [ALLIGATOR O/333/10) Mr Hobbs Q.C., acting as the Appointed Person, set out the test shown below which was endorsed by Arnold J. in Och-Ziff Management Europe Ltd and Oz Management Lp v Och Capital LLP; Union Investment Management Ltd & Ochocki, [2010] EWCH 2599 (Ch). (a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods/ services in question; who is deemed to be reasonably well informed and reasonably circumspect and observant - but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; nevertheless, the Page 4 of 13 overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (e) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element in that mark; (f) a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa; (g) there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it; (h) mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient; (i) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; (j) if the association between the marks causes the public to wrongly believe that the respective goods or services come from the same or economically linked undertakings, there is a likelihood of confusion. Comparison of the respective goods 11.