OPPOSITION No B 2 664 962

VFB Lingerie, S.A., Rue Cesselin, nº 4-6, 75011 Paris, France (opponent), represented by Claire Simonin, 2, rue de Poissy, 75005 Paris, France (professional representative)

a g a i n s t

Peter Kertels, Jean-Monnet-Str. 6, 54343 Föhren, Germany (applicant), represented by Jörg Wagner, Monaiser Str. 21, 54294 Trier, Germany (professional representative).

On 10/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 664 962 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 653 711 (figurative mark), namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 468 702 ‘LOU’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant on 11/11/2016. The request was filed in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 16/11/2016 the opponent was given two months to file the requested proof of use. The term was extended by further two months and, on 20/03/2017, within the relevant time limit, the opponent submitted evidence of use.

However, in its observation filed on 20/09/2019, the applicant informed that the proof of use request is withdrawn because the earlier trade mark was partially cancelled. The applicant also filed by way of a separate document a notification for withdrawal of the proof of use request of 11/11/2016. Therefore, the Opposition Division takes into consideration the withdrawal of the proof of use request. It is thus unnecessary to examine the evidence of use filed by the opponent. The Opposition Division will proceed to examine the opposition on the basis of all the goods as registered and on which the opposition is based.

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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Combinations (clothing), beach wear, underpants, all items of underwear, sleepwear, sportswear, run-resistant underwear, all knitwear, belts (clothing), corsets (underclothing), girdles and suspender belts.

The contested goods are the following:

Class 25: Clothing, footwear, headgear.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

The contested clothing includes, as a broader category the opponent’s underpants, all items of underwear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear overlaps with the opponent’s sportswear. Therefore, they are identical.

The contested footwear is similar to the opponent’s various clothing items, for example, to the opponent’s belts (clothing), beach wear, sportswear. These sets of goods serve the same purpose: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothes items will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing items and footwear. Therefore, these goods are similar.

b) 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 goods found to be identical and similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

LOU
Earlier trade mark	Contested sign

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 consisting of the single verbal element ‘LOU’.

The contested mark is figurative and consists of the verbal element ‘Lylou’ represented in violet letters in a fairly standard font in title-case. Above the word is a device in gold, composed of two female silhouettes, an element resembling two (inverted) ‘L’ letters, a crown as well as other small decorative elements and lines.

The earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. As to the contested sign, indeed the device element is slightly smaller than the verbal element. However, it cannot be said the device element is less noticeable or overshadowed by the verbal element. Hence, it is considered that the contested sign has no element that could be considered clearly more dominant than other elements.

The element ‘LOU’ of the earlier mark will be understood by at least part of the relevant public, for example the English-speaking public, as a male or female name, usually short for Louis or Lewis for the male version, or Louise for the female version. Other part of the public, for example the French-speaking public, will see a female name, a short version of Louise. However, the relevant public in other territories will see no specific meaning. Whether understood or not, since the verbal element of the earlier mark has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods, its inherent distinctive character is normal. Hence, the inherent distinctive character of the earlier mark is normal.

As to the element ‘Lylou’ of the contested sign, the opponent argues that it is a variant of the first name ‘Lou’. However, the Opposition Division is not convinced by the opponent’s statement and two examples. The first example basically explains that the origin of the first name ‘Lilou’ (not ‘Lylou’) is uncertain and it is also commonly used as a diminutive of other female given names (other than the Latin ‘Lou’ or the Germanic ‘Lili’). The second example mentions that ‘Lylou’ is a fairly recent first name for the French public, which became known thanks to the character ‘Leeloo’ in Luc Besson’s movie ‘The Fifth Element’ and has various variants including: Leeloo, Lilou, Lou or Leelou.

In its observations, the opponent states the following:

‘Lylou’ may have a meaning for the French-speaking public. However, the French is more likely to perceive the term ‘Lylou’ as a fancy term, as it was originated only by a recent film (‘The Fifth element’, 1997). Consequently, it is not used as a female name in the French-speaking countries. Moreover, for the French public, ‘LYLOU’ is mainly a fancy word. Also note that in the French-speaking countries, ‘LOU’ and ‘LYLOU’ will be more likely perceived as different variants of the same name (In this case, the female name ‘Louise’).

The Opposition Division considers that the examples given are not very convincing and finds that the above statement of the opponent is a bit contradictory.

Indeed, it is possible that some part of the French-speaking public may perceive the term ‘Lylou’ as fanciful. However, another part of the French public will associate ‘Lylou’ with a first female name (e.g. due to its proximity to ‘Lilou’ which is a version of ‘Lily’ or ‘Élise’). However, there is no evidence on file or any reliable dictionary extract confirming that ‘Lylou’ is an established, known and/or used variant of ‘Lou’. Therefore, the opponent’s argument that the term ‘Lylou’ of the contested sign is a variant of the first name ‘Lou’ is rejected as unfounded.

As mentioned in the above paragraph, the element ‘Lylou’ of the contested sign may be associated in some parts of the relevant territory, for example in France and Belgium, with a first name, either due to its proximity to ‘Lilou’, or because ‘Lylou’ is a female given name, albeit not very popular or widespread. However, for the remaining part of the relevant public, the term ‘Lylou’ has no meaning. Whether understood or not, as this element has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods, its inherent distinctive character is normal.

The opponent also argues that ‘Lylou’ will be split into ‘Ly’ and ‘lou’. However, the Opposition Division does not share this view. Consumers normally perceive a mark as a whole and do not proceed to analyse its details. In the present case, there is no reason (such as an underlying concept or a visual separation of some kind) why the relevant consumer, when faced with ‘Lylou’ of the contested sign would split it into ly-lou, so as to detect the opponent’s mark therein.

As to the device element, although the crown element may bring forward the idea of superiority, royalty and thus have a laudatory connotation, the device element of the contested sign, viewed as a whole, has a normal inherent distinctiveness character.

Visually, the signs coincide in that both contain the letters ‘LOU’, which represent the entirety of the earlier mark and the last three letters of the verbal element ‘Lylou’ of the contested sign. The signs differ in all the remaining elements of the contested sign. The opponent argues that the signs are similar as the earlier mark is entirely included in the contested sign. However, the Opposition Division notes that the fact that ‘lou’ of the earlier mark represents the last three letters of the verbal element of the contested sign does not bring about a degree of visual similarity that is more than very low, at best.

This is because the earlier mark is rather short and in spite of being included entirely in the end of the verbal element of contested trade mark, it is not included as a separable element having an independent distinctive role therein. As mentioned above, there is no reason why the relevant consumer, when faced with the contested sign, would split it into ly-lou, so as to detect the three coinciding letters. 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 and generally in short words small differences may frequently lead to a different overall impression. The earlier mark is a short sign whereas the contested sign is not short and consists of two elements, a device element and a five-letter word.

In addition, account is taken of the fact that the structure and layout of the marks is totally different and the contested sign additionally includes colours and a noticeable and inherently distinctive device element.

Therefore, the signs are visually similar to a very low degree, at best.

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 letters of the earlier mark, ‘LOU’, which appear in the same order at the end of the contested sign. The pronunciation differs in the sound of the additional letters ‘Ly’ of the contested sign, which have no counterparts in the earlier mark. Taking into account the difference in length of pronunciation, in particular the fact that the earlier mark is very short, it is considered that the degree of aural similarity is lower than average, at best.

The concepts of the signs have been defined above. Therefore, in the best case scenario for the opponent the signs will be associated with the concept of person’s names, albeit different ones. However, the mere fact that two names can be grouped under a common generic term of ‘names’ does not constitute conceptual similarity; this is because the public is not likely to make the conceptual link between the two words. The signs also differ in the concepts found in the device element, such as the two female silhouettes and the crown. Consequently, bearing in mind the above, it may be concluded that 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.

d) 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods are identical and similar to the opponent’s goods. The relevant goods are directed at public at large and the degree of attention is average. The inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to a very low degree, at best. They are aurally similar to a lower than average degree, at best. They are not conceptually similar, because the contested sign will be associated with a concept that is lacking in, or is different from that of, the earlier mark.

In the present case, it is particularly relevant to emphasize the importance of the visual comparison between the marks. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional verbal and figurative elements of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

Taking into account all the circumstances of the case, it is concluded that the similarities between the signs are not sufficient and are counterbalanced by the differences between them. The mere fact that the same sequence of letters, ‘-lou’, is contained in the contested sign is not sufficient to make the signs similar. This coincidence does not have an independent distinctive role in the contested sign and will probably go unnoticed.

Even considering that consumers only rarely have the chance to make a direct comparison between the different marks, the differences in the signs are clearly perceptible and sufficient to exclude any likelihood of confusion between them, including in view of the identity of some of the goods.

Consequently, bearing in mind all the relevant circumstances of the case, the Opposition Division concludes that the differences between the marks at issue are sufficient to allow a likelihood of confusion to be ruled out on the part of the relevant public, including the likelihood of association.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Reiner SARAPOGLU

Liliya YORDANOVA

Gueorgui IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.