MicroBnk | Decision 568/2015-1

Date Published: May 15, 2018

DECISION

of the Fifth Board of Appeal

of 13 January 2017

In Case R 2/2016-5

Robert Stocker
Lulu-Beck-Weg 24 82131 Gauting Germany	Applicant / Appellant

represented by Franke & Partner Patent- und Rechtsanwälte, Widenmayerstr. 25, 80538 München, Germany

v

Schuurman Groep B.V.
Parallelweg 44, 7161 AG Neede Netherlands	Opponent / Respondent

represented by Markeys, Voortsweg 131, 7523 CD Enschede, Netherlands

APPEAL relating to Opposition Proceedings No B 2 417 817 (European Union trade mark application No 12 995 171)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), A. Szanyi Felkl (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

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Decision

Summary of the facts

1. By an application filed on 13 June 2014, Robert Stocker (‘the applicant’) sought to register the word mark

SCHUHVISION

for goods and services in Classes 18, 25 and 35.

2. The application was published on 24 July 2014.
3. On 10 October 2014, SCHUURMAN GROEP B.V. (‘the opponent’) filed an opposition against the registration of the published trade mark application, based on the following earlier rights:

• Benelux trade mark registration No 845 474 for the word mark

VISIONS

filed on 12 June 2008 and registered on 13 June 2008 for goods in Classes 18 and 25.

• Benelux trade mark registration No 854 793 for the figurative mark

filed on 27 November 2008 and registered on 11 March 2009 for goods in Classes 18 and 25.

4. The signs and goods in conflict were as follows:

EUTM applied for	Earlier marks
SCHUHVISION	Benelux TM No 845 474 - VISIONS Benelux TM No 854 793:
Class 18 – Leather shoulder belts; Briefcases [leather goods]; Travelling sets (leather ware); Luggage tags [leatherware]; Trimmings of leather for furniture; Chin straps, of leather; Leatherboard; Leather thread; Boxes made of leather; Leather and imitation leather; Boxes made of leather; Moleskin (imitation of leather); straps of leather (saddlery); Envelopes, of leather, for packaging; Casings, of leather, for springs; Trimmings of leather for furniture; Leather, unworked or semi-worked; Tool bags sold empty; Worked or semi-worked hides and other leather; Rucksacks; Beach bags; Briefcases; Chain mesh purses; Frames for umbrellas or parasols; Garment bags for travel; Straps (Leather -); Hand bags; Hat boxes of leather; Haversacks; Imitation leather; Key bags; Laces (Leather -); Leather leashes; Leather straps; Sling bags for carrying infants; Satchels; Suitcase handles; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks. Class 25 – Footwear; Socks; Stockings; Hosiery; Soles for footwear; Clothing, headgear. Class 35 – Retailing in the fields of shoes and textile goods, cleaning and care preparations for footwear, leather goods, bags; Online retailing and catalogue mail order, included in Class 35, in the fields of shoes and textile goods, cleaning and care preparations for footwear, leather goods, bags.	Class 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. Class 25 – Clothing, footwear, headgear.

5. The grounds of opposition were those laid down in Article 8(1)(b) and
   Article 8(5) EUTMR.
6. By decision of 3 November 2015 (‘the contested decision’), the Opposition Division partially upheld the opposition on the grounds that there was a likelihood of confusion for the following goods and services:

Class 18 – Leather shoulder belts; Briefcases [leather goods]; Travelling sets (leather ware); Luggage tags [leatherware]; Trimmings of leather for furniture; Chin straps, of leather; Leatherboard; Leather thread; Boxes made of leather; Leather and imitation leather; Boxes made of leather; Moleskin (imitation of leather); straps of leather (saddlery); Envelopes, of leather, for packaging; Casings, of leather, for springs; Trimmings of leather for furniture; Leather, unworked or semi-worked; Tool bags sold empty; Worked or semi-worked hides and other leather; Rucksacks; Beach bags; Briefcases; Chain mesh purses; Garment bags for travel; Straps (Leather -); Hand bags; Hat boxes of leather; Haversacks; Imitation leather; Key bags; Laces (Leather -); Leather leashes; Leather straps; Sling bags for carrying infants; Satchels; Suitcase handles; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks.

Class 25 – Footwear; Socks; Stockings; Hosiery; Soles for footwear; Clothing, headgear.

Class 35 – Retailing in the fields of shoes and textile goods, leather goods, bags; Online retailing and catalogue mail order, included in Class 35, in the fields of shoes and textile goods, leather goods, bags.

7. It gave, in particular, the following grounds for its decision:

• For reasons of procedural economy, the Opposition Division first examined the opposition in relation to the opponent’s Benelux trade mark registration No 845 474 for the word mark ‘VISIONS’.

Comparison of the goods and services

• The contested goods in Class 18 are identical to the opponent’s goods, except for ‘frames for umbrellas or parasols’, which were considered dissimilar, as they target a different consumer group than the finished products: umbrellas and parasols, and they also differ in nature, purpose, method of use, distribution channels and points of sale.
• The contested goods in Class 25 are identical to the opponent’s goods, with the exception of ‘soles for footwear’, which were considered similar.
• In Class 35, the contested ‘retailing in the fields of shoes and textile goods, leather goods, bags; online retailing and catalogue mail order, included in Class 35, in the fields of shoes and textile goods, leather goods, bags’ are similar to a low degree to the opponent’s goods. However, the contested ‘retailing in the fields of cleaning and care preparations for footwear; online retailing and catalogue mail order, included in Class 35, in the fields of cleaning and care preparations for footwear’ are dissimilar to the goods on which the opposition is based.

The signs

• The contested mark is visually and aurally similar to the earlier mark to the extent that they coincide in the sequence of letters ‘VISION’. However, the marks differ in the final letter, ‘S’, of the earlier mark, and in the sequence of letters ‘SCHUH’ of the contested mark.
• Conceptually, the languages to be taken into account for the relevant territory are Dutch, French and German. For German-speaking consumers, the marks are conceptually similar to the extent that they have in common the concept of something that is seen, and differ in the concept of ‘shoe’. For French-speaking consumers, the word ‘VISION’ exists as such, and has the meaning of something that is seen. Identifying this term will make this part of the public mentally dissect the contested mark into ‘SCHUH’ and ‘VISION’. The element ‘SCHUH’ is meaningless in French. The earlier mark, ‘VISIONS’ will be perceived as the plural form of ‘VISION’. Accordingly, for French-speaking consumers the marks are conceptually identical, since they both refer to the concept of something that is seen. For the Dutch-speaking part of the public, the word ‘VISION’ does not exist as such, but ‘VISIE’ is the Dutch word for ‘vision’. Due to the similar spelling, it is likely that at least part of the public will understand ‘VISIONS’ and ‘VISION’ as having the abovementioned concept. The element ‘SCHUH’ could be perceived by the Dutch-speaking part of the public as meaning ‘shoe’, due to the similarity in spelling between the German word ‘SCHUH’ and the Dutch equivalent, ‘SCHOEN’. For this part of the public, the marks are conceptually similar. However, at least part of the Dutch-speaking public could perceive both marks as meaningless. In that scenario, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Distinctive and dominant elements of the signs

• Regardless of the language spoken by consumers, the earlier mark is of average distinctiveness (i.e. either because it is perceived as meaningless or because it’s meaning is not descriptive or allusive for the goods for which it is registered) and has no elements that are more distinctive than others.
• The contested sign, although it is a single word, will be mentally divided into two by part of the public. For some of the Dutch-speaking consumers, the contested sign is meaningless, and therefore has no elements that could be considered clearly more distinctive than others. For the French-speaking part of the public, the contested mark has no elements that are more distinctive than others, as the element ‘VISION’ is of average distinctiveness for the relevant goods and services, and ‘SCHUH’ is meaningless and therefore also distinctive. The goods and services in relation to which ‘SCHUH’ is ‘distinctive’ (the Board believes that this was a mistake and should be ‘descriptive’ instead) are the following:

Class 25 – Footwear; Soles for footwear.

Class 35 – Retailing in the fields of shoes and textile goods; Online retailing and catalogue mail order, included in Class 35, in the fields of shoes and textile goods.

• The marks under comparison have no elements which could be considered clearly more dominant than others.
• 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 has not been assessed in the present case.
• As for the relevant public, the goods and services found to be identical or similar are directed at average consumers, whose degree of attention is deemed to be average.
• Given all the above findings, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded. Thus, the contested mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark, and also those similar to a low degree, as the similarities between the marks are sufficient to outweigh the low degree of similarity between those services.

Reputation – Article 8(5) EUTMR

• In the present case, the opponent did not refer to Article 8(5) EUTMR in its arguments, and it did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier marks.
• The opponent submitted 11 pages of evidence, but with the sole purpose of demonstrating that the retailing services were highly similar to the goods of the earlier marks. That evidence cannot be referred to in a more detailed way, as the opponent requested that the content be kept confidential. However, despite the fact that this evidence was submitted for a different purpose, it can be stated that it is clearly not sufficient to demonstrate that the requirements under Article 8(5) EUTMR are fulfilled, even if the documents had been submitted for that purpose as well.
• For these reasons the opposition is considered not well founded under
  Article 8(5) EUTMR.

8. On 30 December 2015, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 3 March 2016.
9. In its observations in reply received on 21 April 2016, the opponent requests that the appeal be dismissed and the contested decision be set aside.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

• The comparison of goods and services is accepted.
• However, the comparison of marks is incorrect.  The marks are dissimilar or, at best, similar to a low degree.  Aurally, they are bound to be different. ‘The Opposition Division has not adequately reasoned that e.g. a German speaking consumer would pronounce Applicant’s mark by mixing two languages i.e. pronouncing the first element in German, and the second in English’.   Conceptually, ‘the signs may only be considered as conceptually similar when assuming that the part ‘VISION’ has a clear meaning, e.g. because the relevant public has a basic understanding of English’.
• Taking a global view of the likelihood of confusion the ‘Opposition Division erred in focussing only on the part ‘VISION’ that is identical in both signs’.
• The applicant failed to take into account the overall impression of the marks and instead assumed the consumer to conduct an analytical examination of the sign in question.  
• It was disregarded that ‘SCHUHVISION’ for a German speaking consumer is at least an unusual juxtaposition of word elements and as such cannot be descriptive for at least the services in Class 35, which were found similar to a low degree.  
• The low degree of similarity for the services in Class 35 outweighs any conceptual similarity.

11. The opponent filed observations in reply which may be summarised as follows:

•  The appeal should be dismissed as being inadmissible (see comments below)
•  It does not contest the comparison of goods and services.
•  If the applicant actually considered that the marks are dissimilar then it would have requested to contest the decision in its entirety and certain inferences may be drawn from this.

Reasons

Preliminary issue

12. In the opponent’s observations in reply it claims that the appeal should be dismissed as being inadmissible under Rule 49(1) EUTMR.  It states that on 30 December 2015 the applicant submitted a letter which included the following: ‘Appeal against the decision dated November 3, 2015 in the above mentioned opposition proceedings is herewith lodged.  The official fee will be timely transferred to the OHIM’s account’.  
13. The opponent then referred to Rule 48 EUTMIR which states that a Notice of Appeal (or a document which serves the function of a Notice of Appeal) must contain a) name and address of the appellant, b) where the appellant has appointed a representative, the name and the business address of the representative and, c) a statement identifying the decision which is contested and the extent to which amendment or cancellation of the decision is requested.  It argues that since the notice of appeal dated 30 December 2015 did not specifically state the extent of which it contests the decision, it is inadmissible.  
14. It is clear to the Board that the statement ‘Appeal against the decision dated November 3, 2015’ means that the applicant is challenging the entire decision.  The subsequent statement of grounds which sets out why it challenges all aspects of the decision supports this view.  Therefore, the opponent’s attempt for the appeal to be dismissed on a procedural irregularity is dismissed.
15. In view of the above, the appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Relevant public

16. The perception of the signs in the minds of average consumers of the goods plays a decisive role in the global assessment of the likelihood of confusion (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 23 and 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). The consumer’s level of attention is likely to vary according to the category of goods or services in question.
17. Since the goods at issue are intended not only for the general public but also, in part, at a specialised public, the relevant public is made up of both professionals in need of protective clothing and eyewear, and also of end consumers in the territory of the Benelux States, who are reasonably well informed and reasonably observant and circumspect. This public speaks German, French and Dutch, as it was taken into account by the opposition Division.

Comparison of the marks

18. The global appreciation of the likelihood of confusion, in relation to 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 (judgment of 6 October 2005, C-120/04, ‘Thomson Life’, par. 28). The comparison must be based on the perception, pronunciation and meaning of the conflicting signs in the Member States where the earlier marks are protected, by reference to the target public of the goods and services in that territory. In addition, the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (order of 28 April 2004, C-3/03 P, ‘Matratzen’, par. 32).
19. The signs to be compared are:

VISIONS	SCHUHVISION
Earlier mark	Contested sign

20. Since the earlier relied upon mark is a Benelux national registration, Benelux is the relevant territory.
21. According to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30 and 18/10/2007, T-28/05, Omega 3, EU:T:2007:312, § 54).
22. Visually, the contested decision concluded that whilst the earlier mark is pluralised and the contested sign includes ‘SCHUH’ the marks are nevertheless similar since they coincide in the sequence of letters ‘VISION’.  The applicant argues that visually the respective marks are dissimilar, or, at best, similar to a low degree.  However the board agrees with the Opposition Division that there is similarity since each of the respective marks contains the word VISION.  Since consumers will recognise the word VISION they will immediately dissect them, since the public tends to break down verbal signs into elements which for them suggest a concrete meaning or which resemble words known to them (see, to that effect 13/02/2007, T256/04, Respicur, EU:T:2007:46, § 57, and 13/02/2008, T146/06, Aturion, EU:T:2008:33, § 58). Therefore, there is a certain degree of visual similarity between the marks.
23. Aurally it was found in the contested decision that irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the signs coincides by virtue of each including the word ‘VISION’. Therefore, they are aurally similar.  The applicant argues that ‘the Opposition Division has not adequately reasoned that e.g. a German speaking consumer would pronounce the applicant’s mark by mixing two languages i.e. pronouncing the first element in German, and the second in English’.  The Board finds that since both marks share the word VISION, which in the contested sign would be pronounced separately from SCHUH, there is an obvious aural similarity. In French, the ‘S’ at the end of ‘VISIONS’ is not pronounced at all, so for the French public there is an aural identity as regards the element ‘VISION’ in the contested sign and the earlier ‘VISIONS’ marks are concerned.
24. The languages to be taken into account for the relevant territory are Dutch, French and German, and each were considered in the contested decision.  For the Dutch-speaking public it was concluded that the word ‘VISION’ existed as ‘VISIE’.  In view of the similar spelling, it was found to be likely that at least part of the relevant public will understand ‘VISIONS’ and ‘VISION’ as being the same.  With regard to ‘SCHUH’, the Dutch-speaking part of the public would perceive it as a ‘shoe’.  Therefore, for this part of the public, they are conceptually similar and the Board concurs with the conceptual assessment made by the Opposition Division.
25. With respect to the French speaking consumers since ‘SCHUH’ has no meaning they would be left with the conceptual meanings of ‘VISION’ and ‘VISIONS’.  Therefore, they are conceptually similar also to the French speaking relevant consumer.
26. Turning to German speakers, it was found that ‘VISION’ has the same meaning in German as it does in English and that ‘SCHUH’ means shoe.  In relation to shoes or various types of footwear, the word ‘SCHUH’ is clearly descriptive.  Therefore the respective marks share the ‘VISION’ concept.  With regard to non-shoe and footwear goods ‘SCHUH’ is not descriptive and does alter the conceptual meaning to a vivid idea or anticipation of something relating to shoes.  This reduces the degree of conceptual similarity.
27. Visually there is a certain degree of similarity since both signs share the word ‘VISION’.  In the contested sign this is preceded by ‘SCHUH’ and the earlier mark is pluralised.  The Board is of the view that whilst the contested sign is conjoined, the relevant consumer would still recognise each word and would separate it accordingly.  Therefore, there is also a visual similarity to an average degree.

Comparison of the goods and services

28. The goods and services applied for which are still at issue in the present appeal are the following:

Class 18 - Leather shoulder belts; Briefcases [leather goods]; Travelling sets (leather ware); Luggage tags [leatherware]; Trimmings of leather for furniture; Chin straps, of leather; Leatherboard; Leather thread; Boxes made of leather; Leather and imitation leather; Boxes made of leather; Moleskin (imitation of leather); straps of leather(saddlery); Envelopes, of leather, for packaging; Casings, of leather, for springs; Trimmings of leather for furniture; Leather, unworked or semi-worked; Tool bags sold empty; Worked or semi-worked hides and other leather; Rucksacks; Beach bags; Briefcases; Chain mesh purses; Frames for umbrellas or parasols; Garment bags for travel; Straps (Leather -); Hand bags; Hat boxes of leather; Haversacks; Imitation leather; Key bags; Laces (Leather -); Leather leashes; Leather straps; Sling bags for carrying infants; Satchels; Suitcase handles; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks.

Class 25 - Footwear; Socks; Stockings; Hosiery; Soles for footwear; Clothing, headgear.

Class 35 - Retailing in the fields of shoes and textile goods, cleaning and care preparations for footwear, leather goods, bags; Online retailing and catalogue mail order, included in Class 35, in the fields of shoes and textile goods, cleaning and care preparations for footwear, leather goods, bags.

29. The Opposition Division found that:

•  All of the contested Class 25 goods are identical to those covered by the earlier mark except for ‘soles for footwear’ which were considered to be similar.
•  All of the contested Class 18 goods are identical to those covered by the earlier mark except for ‘frames for umbrellas or parasols’ are dissimilar to those covered by the earlier marks.
•  The contested Class 35 ‘retailing in the fields of shoes and textile goods, leather goods, bags; online retailing and catalogue mail order, included in Class 35, in the fields of shoes and textile goods, leather goods, bags’ services are similar to a low degree to the earlier Class 25 ‘footwear, clothing’ and ‘goods made of these materials and not included in other classes (-leather); travelling bags’
•  The contested ‘retail in the fields of cleaning and care preparations for footwear; online retailing and catalogue mail order, included in Class 35, in the fields of cleaning and care preparations for footwear’ are dissimilar to all of the earlier goods.

30. Both parties agree with the conclusion reached in the contested decision and so does the Board. The above comparison is thus confirmed.

Overall assessment of the likelihood of confusion

31. A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or 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, and 14/12/2006, T-81/03, T 82/03 and T-103/03, Venado, EU:T:2006:397, § 74).
32. Many of the respective goods are identical.  The respective marks are overall similar due to the fact that they both contain ‘VISION’.  Whilst the contested sign begins with ‘SCHUH’, the marks nevertheless coincide in the word ‘VISION’ which would be understood and viewed separately from ‘SCHUH’.  Accordingly, there are visual, aural and conceptual similarities between the respective marks in respect of the Dutch, French and German speaking public.  
33. As stated above, the relevant territory is Benelux where the co-official language is German.   In view of this the contested sign would be viewed as two separate words, namely SCHUH (German for shoe) and VISION having the same meaning in German as in English.  In view of this, the word VISION would be naturally dissected from SCHUH and is therefore independently distinctive (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30). Applying the interdependence principle the Board is of the view that the Opposition Division was correct to find that there was a likelihood of confusion. As regards footwear and footwear retail, the sign might also be perceived as a sub-brand, deriving from the principal mark ‘VISIONS’.  It is common in the fashion sector to use sub-brands in order to distinguish its various lines from one another (see 06/10/2004, T117/03 - T119/03 & T171/03, NL, EU:T:2004:293, § 51 and the case law cited).
34. As regards the French public, which will see the word ‘SCHUH’ as a foreign or fantasy term, the sign ‘SCHUHVISION’ might be perceived as a related sign, to the earlier ‘VISIONS’.
35. With regard to the contested goods and services which were not considered to be identical, the Board finds that given the overall similarity between the signs, applying the interdependency principle, this outweighs the lower degree of similarity between the goods and services.  Therefore, the Board concludes that the Opposition Division was correct in finding that there is also a likelihood of confusion with respect to Class 25 ‘soles for footwear’ and Class 35 ‘retailing in the fields of shoes and textile goods, leather goods, bags; online retailing and catalogue mail order, included in Class 35, in the fields of shoes and textile goods, leather goods, bags’.

Costs

36. Since the appeal is dismissed and the applicant is the losing party, it must bear the fees and costs of the opponent in accordance with Article 85(1) CTMR and Rule 94(1) CTMIR.
37. Pursuant to Article 85(6) CTMR the Board shall fix the amount of the costs to be paid when they are limited to the fees paid to the Office and to the winning party’s representation costs of a professional representative in the sense of Article 93(1) CTMR, which amount to EUR 550 as specified in Rule 94(2) and (7)(d) CTMIR, irrespective if they have actually been incurred. With respect to the costs of the opposition procedure, the contested decision’s order on the cost sharing between the parties is confirmed. Any final decision fixing the amount of costs shall be enforceable pursuant to Article 96 CTMR.

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Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;
2. Orders the applicant to bear the costs of the opponent in the appeal proceedings;
3. Fixes the total amount to be reimbursed by the applicant to the opponent at EUR 550.

Signed G. Humphreys

Signed A. Szanyi Felkl

Signed A. Pohlmann

Registrar: Signed H.Dijkema