Resting on reputation

14th Oct 2019

The choice to abandon an opposition ground is examined by Ryan Kellingray. B 3 048 470, Abercrombie & Fitch Europe Sagl v Tarkan Soner Sevinçli, EUIPO, 23rd July 2019

B 3 048 470, Abercrombie & Fitch Europe Sagl v Tarkan Soner Sevinçli, EUIPO, 23rd July 2019

Tarkan Soner Sevinçli filed an EU trade mark application for the word HOLLIS, covering a range of goods in class 9. Abercrombie & Fitch Europe Sagl filed an opposition on the basis of various earlier trade mark registrations in the EU for HOLLISTER. 

When initially filed, the opposition was based on Article 8(1)(b) EUTMR, alleging a likelihood of confusion, as well as on the reputation grounds contained in Article 8(5). However, as the proceedings progressed, Abercrombie & Fitch opted not to substantiate the latter ground, purportedly on the basis of “procedural economy” in light of what it believed was the “clear likelihood of confusion”. As such, the opposition proceeded solely on the basis of the similar mark, coupled with the range of identical and similar goods, and a resultant likelihood of confusion.

Opposition decision

The EUIPO upheld the opposition for almost all of the contested goods. 

The Opposition Division (OD) found that the marks HOLLIS and HOLLISTER were visually and aurally similar to a higher than average degree, highlighting the importance of the first part of the mark in conducting this assessment. In conducting the comparison of the goods in question, the OD held that the application covered a number of identical goods that were covered by both synonymous and broad language in Abercrombie & Fitch’s earlier registration, along with many which were “at least similar”. 

In doing so, it reaffirmed the long-standing position that, where it appears in a trade mark specification, the term “including” introduces a non-exhaustive list of examples. The EUIPO also reaffirmed the position that “remote similarity” between goods and/or services in opposition will suffice to bring these into the purview of the likelihood-of-confusion assessment. The only goods for which such a “remote similarity” was not found were “decorative magnets”, against which the opposition was subsequently unsuccessful. 

In finding that there was a likelihood of confusion in relation to the remainder of the application, the OD highlighted the importance of the coincidence of the distinctive verbal element HOLLIS. The position of the differentiating suffix TER at the end of the earlier mark is less likely to catch consumers’ attention. 

Useful effort? 

While Abercrombie & Fitch was successful on Article 8(1)(b) grounds in what appears to have played out as a relatively straightforward opposition, the deletion of the Article 8(5) ground is an interesting point. The high threshold for substantiating a reputation for these purposes means that decisions about whether to collate and submit such evidence will need careful consideration and will be circumstantial, depending broadly on the strength of any likelihood-of-confusion argument – even where such a reputation could, and should, rightly be asserted.

Key points

• It may be worth considering whether it is efficient or cost-effective to substantiate an Article 8(5) claim of reputation in EUIPO opposition actions given the high threshold for proving this
• EUIPO interprets the word “including” in trade mark specifications as introducing a non-exhaustive list
• The first part of the mark is dominant in a likelihood-of-confusion assessment  

Ryan Kellingray is a Trade Mark Assistant at Lincoln IP

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