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Trade Marks Inter Partes Decision O/043/20

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Trade Marks Inter Partes Decision O/043/20 O/043/20 TRADE MARKS ACT 1994 IN THE MATTER OF TRADE MARK APPLICATION NO. 3407356 BY RAYHAN FARUK TO REGISTER: Best of Sinners AS A TRADE MARK IN CLASS 25 AND IN THE MATTER OF THE OPPOSITION THERETO UNDER NO. 600001200 BY CRYSTAL BEHEER B.V. BACKGROUND AND PLEADINGS 1. Rayhan Faruk (“the applicant”) applied to register Best of Sinners as a trade mark in the United Kingdom on 17 June 2019. It was accepted and published in the Trade Marks Journal on 12 July 2019 in respect of goods in Class 25. The full specification can be found in the Annex to this decision. 2. On 10 September 2019, the application was opposed by Crystal Beheer B.V. (“the opponent”). The opposition is based on section 5(2)(b) of the Trade Marks Act 1994 (“the Act”) and concerns all goods in the application. This is on the basis of International Trade Mark no. 1187550: SINNER. The mark was designated for protection in the EU on 14 February 2013, with a priority date of 12 February 2013. Protection was granted in the EU on 4 November 2014. In this opposition, the opponent is relying on the following goods and services: Class 9 Optical apparatus, instruments and parts not included in other classes; contact lenses; containers for contact lenses; measuring instruments, eye protectors, including components, parts and fittings (not included in other classes); glasses, spectacles (optics), spectacle glasses or lenses, spectacle cases, spectacle frames, components, parts and fittings (not included in other classes); sunglasses, glasses for sunglasses, cases for sunglasses, frames for sunglasses, components, parts and fittings (not included in other classes); (sun) visors for spectacles, ski goggles, motor goggles and any other goggles for sports; helmets, including sport helmets, ski helmets; protective or safety helmets; protective glasses and safety glasses (goggles); protective clothing (not included in other classes); accessories for eye protectors, spectacles, sunglasses and spectacle frames, including spectacle cords, spectacle chains, spectacle cases, sun visors for spectacles, lens hoods for spectacles. Class 25 Clothing, footwear and headwear, including sportswear, sport shoes and sport headwear; accessories for clothing, including bandanas, suspenders, hoods (clothing), neckties, scarves, headbands, scull caps, cuffs, muffs, ear muffs, Page 2 of 26 pocket squares, saris, sashes for wear, stoles, caps, shawls, gloves, belts, skiwear; ski masks. Class 35 Advertising, business management, business and administration, office functions, business mediation in the purchase, sale, import and export of optical apparatus, instruments and parts, contact lenses, containers for contact lenses, solutions and liquids for contact lenses, measuring instruments, eye protectors, including components, parts and fittings, glasses, spectacles (optics), spectacle glasses or lenses, spectacle cases, spectacle frames, components, parts and fittings, sunglasses, glasses for sunglasses, cases for sunglasses, frames for sunglasses, components, parts and fittings, (sun) visors for spectacles, ski goggles, motor goggles and any other goggles for sports, helmets, including sport helmets, ski helmets, protective or safety helmets, protective glasses and safety glasses (goggles), protective clothing, ski masks, accessories for eye protectors, spectacles, sunglasses and spectacle frames, including spectacle cords, spectacle chains, spectacle cases, sun visors for spectacles, lens hoods for spectacles, clothing, footwear and headwear, including sportswear, sport shoes and sport headwear, skiwear, accessories for clothing, including bandanas, suspenders, hoods (clothing), neckties, scarves, headbands, scull caps, cuffs, muffs, ear muffs, pocket squares, saris, sashes for wear, stoles, caps, shawls, gloves, belts. 3. The opponent claims that the marks are highly similar as the applied-for mark contains the earlier mark, that “BEST OF…” would be seen as a laudatory phrase and that the dominant and distinctive element of the mark is “SINNERS”. It also claims that the applied-for goods are identical or similar to goods upon which it relies. Therefore, it claims that there exists a likelihood of confusion for the average consumer. 4. The applicant filed a defence and counterstatement, denying the grounds. 5. Rule 6 of the Trade Marks (Fast Track Opposition)(Amendment) Rules 2013, S.I. 2013/2235, disapplies paragraphs 1-3 of Rule 20 of the Trade Marks Rules 2008, but provides that Rule 20(4) shall continue to apply. Rule 20(4) states that: Page 3 of 26 “The registrar may, at any time, give leave to either party to file evidence upon such terms as the registrar thinks fit.” 6. The net effect of these changes is to require parties to seek leave in order to file evidence in fast track oppositions. No leave was sought in respect of these proceedings. 7. Rule 62(5) (as amended) states that arguments in fast track proceedings shall be heard orally only if (i) the office requests it or (ii) either party to the proceedings requests it and the registrar considers that oral proceedings are necessary to deal with the case justly and at proportionate cost; otherwise, written arguments will be taken. A hearing was neither requested nor considered necessary. 8. Both parties filed written submissions in lieu of a hearing, the applicant on 11 December 2019 and the opponent on 27 December 2019. 9. In these proceedings, the opponent is represented by Novagraaf UK while the applicant represents himself. Preliminary issues 10. The applicant submits that there is no issue of passing off and refers to the judge’s decision in Office Cleaning Services Limited v Westminster Window & General Cleaners Limited [1946] 63 RPC 39. The opponent has, however, only made pleadings on the basis of section 5(2)(b) of the Act, not section 5(4)(a) which is the part of the Act that deals with passing off. I shall therefore give this no further consideration. 11. The applicant also submits that the opponent’s trade mark is aimed at the European market, while his is aimed at the UK. The earlier trade mark gives protection in all Member States of the European Union, including the UK. It is not subject to the proof of use provisions under section 6A of the Act, having been granted protection in the EU within the five years before the date on which the application was made. Therefore, I am required to consider the notional and fair use of the marks. Page 4 of 26 12. Finally, the applicant refers to the existence of other clothing brands associated with the word “SINNER” and of other trade marks containing the same word and registered for goods in Class 25. The applicant did not seek leave to file evidence and so I am unable to take account of this. Nevertheless, the presence of other marks on the trade mark register gives no indication of whether they are used in the market and the fact that the opponent has not opposed these marks has no bearing on the current proceedings. DECISION Legislation 13. Section 5(2)(b) of the Act is as follows: “5(2) A trade mark shall not be registered if because – … (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.” 14. An “earlier trade mark” is defined in section 6(1) of the Act: “In this Act an ‘earlier trade mark’ means – (a) a registered trade mark, international trade mark (UK), a European Union trade mark or international trade mark (EC) 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 Page 5 of 26 …” 15. The registration upon which the opponent relies qualifies as an earlier trade mark under the above provision. As the mark was granted protection in the EU within the five years before the date on which the application was made, it is not subject to the proof of use provisions contained in section 6A of the Act. The opponent is entitled to rely on all the goods and services for which the earlier mark stands registered. Case law 16. In considering the opposition, I am guided by the following principles, gleaned from the decisions of the courts of the European Union in SABEL BV v Puma AG (C-251/95), Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (C-39/97), Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97), Marca Mode CV v Adidas AG & Adidas Benelux BV (C-425/98), Matratzen Concord GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-3/03), Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (C-120/04), Shaker di L. Laudato & C. Sas v OHIM (C-334/05 P) and Bimbo SA v OHIM (C-519/12 P): 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 or services in question. The average consumer is deemed to be reasonably well informed and reasonably circumspect and observant, but someone 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;
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