V | Decision 2585795 - Verdes Innovations S.A. v. VAMO Varumärkesombudet AB
Date Published: May 17, 2018
OPPOSITION No B 2 585 795
Verdes Innovations S.A., Chiliomodi, 20008 Corinthos, Greece (opponent), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 Munich, Germany (professional representative)
a g a i n s t
VAMO Varumärkesombudet AB, Box 7067, 40232 Gothenburg, Sweden (applicant), represented by VAMO Varumärkesombudet AB, Kungsportsavenyen 3, 411 36 Gothenburg, Sweden (professional representative).
On 18/01/2017, the Opposition Division takes the following
1. Opposition No B 2 585 795 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the services of European Union trade mark application No 14 264 949, namely against all the services in Classes 35 and 41. The opposition is based on European Union trade mark registration No 13 838 198. The opponent invoked Article 8(1)(b) EUTMR.
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 and services
After a restriction of the specification, the goods and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; fire-extinguishing apparatus; recorded content; information technology and audiovisual equipment; magnets; magnetizers; games software; software for the creation of individual games, toys and educational teaching products.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; toys; novelties; educational playthings.
Class 35: Advertising in relation to the tailor-made production of toys for third parties; office functions in relation to the tailor-made production and commercialization of toys for third parties; retail and wholesale services in connection with paper, cardboard, 3D decals for use on any surface, labels, advertisement signs of paper and cardboard, cards, albums, art etchings and prints, beer mats, boxes made of paper and cardboard, packaging of paper and cardboard, catalogues, coasters made of paper and cardboard, planners, diaries, agendas, gift certificates, gift wrapping paper, paper table linen, stickers, works of art and figurines of paper and cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers' type, printing blocks; retail and wholesale services in connection with key rings made of plastic, non-metallic key rings, furniture, mirrors, picture frames, action figures, advertising display boards, art works of wood, wax, plaster or plastic, baskets, bottle racks, boxes made of plastic or wood, corks, statues, works of art, decorations, figurines and ornaments of plaster, plastics, wood, bone, wax or ivory; retail and wholesale services in connection with clothing, footwear, headgear; retail and wholesale services in connection with games and playthings, gymnastic and sporting articles, decorations for Christmas trees, toys, novelties, educational playthings.
Class 40: Tailor-made production of toys for third parties.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; organization and performance of conferences, exhibitions and competitions; performance of games.
The contested services are the following:
Class 35: Business assistance, management and administrative services; Business consultancy and advisory services; Business analysis, research and information services.
Class 41: Education, entertainment and sports; education and instruction.
Some of the contested services are identical to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.
- 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 services assumed to be identical are directed at the public at large (services in Class 41) and at business customers with specific professional knowledge or expertise (services in Class 35). The degree of attention may vary from average (for services in Class 41) to high (for services in Class 35).
- The signs
Earlier trade mark
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 earlier mark is a word mark. It consists of the single letter ‘V’.
The contested sign is a figurative mark. It consists of the letter ‘V’ surrounded by the letter ‘C’.
The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letter ‘V’. However, they differ in the additional letter ‘C’ of the contested sign.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Therefore, the signs are similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‛V’, present identically in both signs. However, the pronunciation differs in the sound of the additional letter ‘C’ of the contested sign, which will be pronounced as ‘C-V’. Consequently, the signs are aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the earlier sign as the single letter ‘V’. In contrast, the contested sign ‘CV’ consists of two letters, which could be associated with a dissimilar meaning, for example as an abbreviation for ‘curriculum vitae’, or with no specific meaning at all. Therefore, 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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
The similarities between the signs are limited to the coinciding letter ‘V’. However, while the earlier mark only consists of this single letter, the contested sign features an additional letter.
Considering that the earlier mark does not enjoy enhanced distinctiveness and the fact that both signs are very short, it is considered that the fact that they differ in the additional letter ‘C’ of the contested sign is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs: the signs are not sufficiently similar to lead to a likelihood of confusion – in spite of assumed identity of the services.
Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Francesca CANGERI SERRANO
Begoña URIARTE VALIENTE
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.