OPPOSITION No B 2 805 698

Jaguar Land Rover Limited, Abbey Road, Whitley, CV3 4LF Coventry, United Kingdom (opponent), represented by Reddie & Grose LLP, The White Chapel Building 10 Whitechapel High Street, E1 8QS London, United Kingdom (professional representative)

a g a i n s t

Joseph Vögele AG, Joseph-Vögele-Str. 1, 67067 Ludwigshafen, Germany (applicant), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative).

On 06/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 805 698 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 and services of European Union trade mark application No 15 151 921 ‘VÖGELE’ (word mark), namely against all the goods in classes 9, 11, 12 and 28 and some of the goods and services in Classes 6, 20, 35, 41 and 42. The opposition is based on European Union trade mark registration No 6 539 746 ’VOGUE’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

ASSESSMENT OF THE SUBMITTED EVIDENCE (PROOF OF USE, ENHANCED DISTINCTIVENESS, REPUTATION)

The outcome of the opposition depends to a great extent on the conclusions in relation to the evidence submitted by the opponent in order to prove the genuine use, the enhanced distinctiveness and reputation of the earlier marks. Therefore, in this section the Opposition Division will first set out the submitted evidence in its entirety and will determine whether the earlier marks were put to genuine use and whether they acquired enhanced distinctiveness and/or reputation.

On 10/09/2018 the opponent submitted evidence to support its claim for enhanced distinctiveness and reputation. The evidence consists of the following documents:

- 3 pictures of cars which show the sign ‘VOGUE’.

- An online-article from a site called ‘AROnline’ dated 10/12/2013 on the history of Range Rover vehicles; in this article it is mentioned that ‘Vogue became a production model in its own right in 1984’.

- Printout from a website ‘www.telegraph.co.uk’ from 28/11/2000 which states ‘ONE of the most eagerly-awaited automotive books is a yet-to-be-written volume catchily entitled The Social History Of The Range Rover’ and ‘Range Rover's Vogue: a limousine with mud-plugging ability, it's like a hand-tailored suit atop a pair of hiking boots’.

- Information from the Land Rover website on the current VOGUE model.

- Print outs form a websites called ‘motors.co.uk’ dated 09/10/2018 where VOGUE models of various generations are listed for sale. The second-hand VOGUE vehicles listed have respective registration dates of 2002, 2004, 2006, 2008, 2010, 2012, 2014 and 2016

Following the request of the applicant to submit proof of use of the trade mark on which the opposition is based, on 10/04/2019 the opponent submitted also the following evidence:

- Undated Land Rover website extracts showing a map of retailers in most of the countries of the EU. The Sign ‘Vogue’ is not mentioned.

- Extracts from a website called Carsalesbase.com showing the number of Range Rover vehicles sold in Europe in the years 1997 – 2018. The Sign ‘Vogue’ is not mentioned.

- 12 Invoices from Austria from the years 2011- 2016. These invoices include a ‘Vogue silver package’ and a ‘Vogue package’. Prices are blacked and can not be seen.

- 5 Invoices from the Czech Republic from the years 2011- 2016. These invoices include a ‘Vogue package’. Prices are blacked and cannot be seen.

- 12 Invoices relating to the sale of VOGUE vehicles in France from 2011- 2016. Prices are blacked and cannot be seen.

- 8 Invoices relating to the sale of VOGUE vehicles in Germany from 2012 – 2016. Prices are blacked and cannot be seen.

- 11 Invoices relating to the sale of VOGUE vehicles in Italy from 2011 – 2016. Prices are blacked and cannot be seen.

- 19 Invoices relating to the sale of VOGUE vehicles in Spain from 2011 – 2016. Prices are blacked and cannot be seen.

- 10 Invoices relating to the sale of VOGUE vehicles in the UK from 2014 – 2016. Prices are blacked and cannot be seen.

- Extracts from national Land Rover websites showing Land Rover VOGUE cars.

- Land Rover Brochure extracts relating also to the VOGUE model.

- Extracts from the VOGUE online configuration platform.

- Articles on awards won by Land Rover vehicles.

The Range Rover Vogue SE is mentioned as “Best Buy £ 70 000 - £ 100 000” by “What Car?” in 2016.

Also by “What Car” a “Tow Car Awards” site in which the Range Rover 3.0 TDV6 Vogue SE is mentioned

- Press Articles from ‘Auto Express’, ‘What Car’, ‘Autocar’ and ‘carbuyer’ published in the period 2012 – 2015 in which different Land Rover cars are mentioned in some of the articles there are reviews and test results of the “Vogue”-Model.

In its observation from 02/01/2020 the opponent additionally submitted the following evidence with a view to proving the sources of information used by the author of the information in Annex 2:

- screenshot-www.autonews.com-2019.10.22-15_13_23 https://www.autonews.com/section/data-center from 22.10.2019

(neither the opponent nor the sign in question appears in this web page)

- screenshot-www.jato.com-2019.10.22-15_10_57https://www.jato.com/ from 22.10.2019

(neither the opponent nor the sign in question appears in this web page)

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 6 539 746.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 26/02/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/02/2011 to 25/02/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 12: Land motor vehicles and parts and fittings therefor.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 06/02/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 11/04/2019 to submit evidence of use of the earlier trade mark. On 10/04/2019, within the time limit, the opponent submitted evidence of use.

In order to prove genuine use of the earlier mark the opponent relies on the evidence listed above submitted on 10/09/2018 and on 10/04/2019. The Opposition Division points out that the evidence which was submitted to proof reputation of the earlier sign will also be taken into account when assessing prove of use of the earlier sign, as it was submitted before the time limit for providing proof of use.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices are issued from 2011 to 2016, i.e. within the relevant period. The place of use can be inferred from the language of the documents and the addresses. From the evidence submitted (in particular, the invoices addressed to customers in several EU Member States), the Opposition Division can conclude that there are sufficient indications as to the place of use, i.e. the European Union.

The documents filed, in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The applicant argues that there is no information about the extent of use. It is true that the information about the turnover (even if the opponent´s arguments and evidence as regards the reliability of the sources of information used was to be accepted) does not show sales figures for ‘Vogue’ models. However the Opposition Division considers that the invoices – even if the prices are blacked – show that there was genuine sale of cars under the trade mark ‘Vogue’.

The submitted evidence also shows that the sign was used as registered and in accordance with its function.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the Aladin case, the GC held:

if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. (Judgment of 14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45.)

In order to define adequate subcategories of general indications, the criterion of the purpose or intended use of the product or service in question is of fundamental importance, as consumers do employ this criterion before making a purchase (judgments of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 29-30; 23/09/2009,

T-493/07, Famoxin, EU:T:2009:355, § 37).

In the present case the evidence of use shows that the mark has been used for ‘cars’, which is an adequate subcategory of “land motor vehicles”.

Therefore it is concluded that the mark has been used in accordance with its function

and as registered for the following goods:

Class 12: Cars.

There is no evidence for ‘Land motor vehicles’ other than cars. Neither is there any evidence for the remaining goods for which the earlier mark is registered namely ‘parts and fittings for Land motor vehicles’. The fact that ‘Vogue’ cars consist of parts and fittings is not sufficient to proof use of the trade mark for these goods. The opponent did not submit any evidence to show that it is offering parts and fittings for cars under the trademark ‘Vogue’. The invoices mention a ‘Vogue package’ but there is no information what this ‘package’ consist of.

Therefore, the Opposition Division will only consider ‘cars’ in its further examination of the opposition.

Enhanced distinctiveness and reputation

According to the opponent the earlier trade mark has a reputation and enjoys a high degree of distinctiveness because of its long term use among the relevant public in the European Union. The Opposition Division will assess the evidence in the light of the claimed reputation in relation to the goods for which genuine use has been proven.

The claim of the opponent must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (see judgment of 11/11/1997, C-251/95, ‘Sabel’), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgment of 29/09/1998, C-39/97, ‘Canon’).

Furthermore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the opponent’s trade mark has a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Seeing as it is relevant to the opposition further below, the Opposition Division will also determine in this section whether the earlier mark is reputed.

According to Article 8(5) EUTMDR, where the opponent submits, after the expiry of the time limit set by the Office, facts or evidence that supplement prior relevant facts or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relates to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant to the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

The Opposition Division points out that the evidence submitted in response to the applicant’s proof of use may be considered to be late supplementary evidence for proving reputation. However, in the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 10/04/2019 and 02/01/2020 can remain open. The Opposition Division deems it appropriate to proceed with the examination of the present case by taking into account also the belated evidence submitted by the opponent in relation to its reputation claim. This approach will not be to the applicant´s detriment, as will be seen below.

In making the assessment about enhanced distinctiveness and reputation, account should be taken, in particular of the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

Some of the evidence submitted by the opponent consists of website printouts. The probative value of website printouts is not particularly high, since they only show the content displayed as of the moment of printing it. Bearing in mind how quickly the content of a website can be changed and also the fact that the opponent did not submit evidence proving that these websites have been visited and, if so, to what extent, the Opposition Division finds their probative value rather low.

Part of the evidence consists of copies from magazines and newspapers. However, the opponent did not submit any information as to the kind of the medium used (national, regional, local) or the audience rates or circulation figures attained by the relevant publications. Consequently the submitted evidence can give little information as to the level of recognition of the earlier marks.

It is further to be noted that the majority of the evidence comes from the opponent (printouts of the opponent’s websites, brochures). Although it cannot be completely disregarded in the assessment, the fact remains that the probative value of the evidence coming from the opponent and not by independent third parties is again rather low.

The opponent argues that that the reputation of the VOGUE mark had reached such a point that books were being written on the social history of the vehicle. Contrary to the opponents argument the submitted article from a website ‘www.telegraph.co.uk’ from 28/11/2000 states ‘ONE of the most eagerly-awaited automotive books is a yet-to-be-written volume catchily entitled The Social History Of The Range Rover’ and ‘Range Rover's Vogue: a limousine with mud-plugging ability, it's like a hand-tailored suit atop a pair of hiking boots’. In other words there is no evidence that a book is written about ‘Vogue’ models but the author of the article only states that it would be a long awaited book about the history of ‘Range Rover’.

The information about Sales figures come from the website www.carsalesbase.com/european-car-sales-data/land-rover/range-rover. The opponent points out that the author of this blog collects its information from sources like www.autonews.com and www.jato.com (the opponent includes extractions of this websites) which call themselves the “industries primary source of automotive sales”. But neither the opponent nor the sign in question appears in this web pages. Furthermore the sales numbers submitted only concern land rover cars in general and no information is given about the sale of ‘Vogue’ models. The opponent points out that the evidence refers only to the core Range Rover models witch are named ‘Vogue’, ‘Vogue SE’ and ‘Autobiography’. This however doesn’t follow from the evidence submitted which only states that the figures concern ‘Range Rover’ cars.

The website called ‘motors.co.uk’ dated 09/10/2018 where VOGUE models of various generations are listed for sale only shows that these kind of cars are sold ‘second hand’. That does not give information about any reputation of these cars.

Concerning the awards won by Land Rover ‘Vogue’ models it has not been shown that these competitions are known to the relevant public or that the award was granted after surveying consumers in the relevant territory. Furthermore it is not even clear if the Vogue Model was awarded the “TOW CAR Award” since it shows only some details about this model and the article ends with the statement: “Brilliant though it is, however, is the Ranger Rover better than a Discovery? No matter how much we admire Land Rover’s new flagship, for us the answer is no”.

The majority of the remaining documents come from the opponent, like brochures, the list of land Rover dealers in Europe a car configuration site etc. There is no information to the audience rates or circulation figures attained by these publications. They only show that ‘Vogue’ model exist but give no information about reputation or enhanced distinctiveness of such cars.

In the absence of any evidence that can clearly prove the extent of recognition amongst the relevant public such as a survey on the mark’s recognition, opinion polls or other means of evidence such as sworn or affirmed statements, facts and figures originating from independent sources such as auditors or chambers of commerce, decisions of Courts or administrative bodies, bearing in mind the above analysis of the submitted documents as a whole, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark is known by such a significant part of the relevant public so that it reaches the threshold necessary for a finding of reputation or enhanced distinctiveness.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground.

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 and services

Preliminary remark

In its notice of opposition the opponent directs its opposition against goods and services in classes 6, 9, 11, 12, 20, 28, 35, 41 and 42. In its submission from 10/09/2018 the Opponent states that the contested goods are some of the goods in classes 6, 12, 20 and 28. However since the Opponent did not explicitly withdraw its opposition against the originally mentioned goods and services the Opposition Division considers that the Opposition still is directed against those goods and services which will not be to the applicant`s prejudice, as will be seen below.

The goods on which the opposition is based are the goods for which proof of use was shown, namely the following:

Class 12: Cars.

The contested goods and services are the following:

Class 06: Model vehicles; All of the aforesaid goods consisting of metal, not for electric purposes.

Class 09: Scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), control and regulating apparatus and instruments; Apparatus, equipment and instruments for the conducting, switching, converting, storage, regulating and controlling of electricity; Apparatus and instruments for capturing, recording, transmission, reception or reproduction of sound, images and data; Impression rollers; Push beams; Analysis and diagnostic apparatus; Connection units; Antennas; Aerial installations; Indication panels; Audio devices and radio receivers; Suspension apparatus; Batteries; Battery chargers; Command panels; Control apparatus; Control desks; Frame sensors; CAN modules; Computers; Peripherals adapted for use with computers; Data carriers for recording images, sound and data; Detectors; seals; Displays; Metering installations; Dosimeters; Wires; Pressure switches; Pressure sensors; Electric and electronic apparatus, devices and equipment for telematics, telecommunications and/or data processing purposes; Electric and electronic apparatus, devices and equipment for operation and error analysis; Electric switchboxes, switch cabinets and distribution boards; Electrical circuits and circuit boards; Electric and electronic equipment for lifting or lowering machines or parts of machines; Electrical amplifiers; Electronic modules; Electrostatic precipitators; Detection instruments, apparatus, regulators and devices; Electric tools; Receiving apparatus; Remote control apparatus; Fire-extinguishing apparatus; Films for educational purposes; Filters; Filter components; Radiocommunication apparatus; Generators; Graphic equalizers; Hardware; Height sensors; Horns; Hydraulic tools; Hydraulic motors; Hydro cylinders; Pulse generators; Information technology and audiovisual apparatus; Joy sticks; Cables; Cable harnesses; Cable contacts; Cable loops; Clips; pistons; Piston rods; Communications equipment; Bearings; Lasers; Laser, infrared and ultrasound apparatus, devices and instruments; Loudspeakers; Light diodes; Luminous signs; Magnets; Magnetising and demagnetising apparatus; Rubbers for material hoppers; Navigation, orientation, positioning, location tracking, target tracking and mapping apparatus and instruments; Gradient sensors; Levelling apparatus, devices and instruments; Levelling systems; Oil level indicators; Boards; Proportional amplifiers; Testing and quality control apparatus and instruments; Pumps (in particular lubricant and hydro pumps); Calculators; reflectors; Regulators; Relay; Image scanning apparatus; Commutators; Keys; Keycards; Protective apparatus and equipment; Transmitters; Sensors, in particular level sensors and overfill sensors; Safety apparatus and equipment; Safety apparatus and equipment; Fuses; Signals and signalling panels; Instrumentation simulators; Ski sensors; Software; Mirrors; Steel cores; Control apparatus, instruments, regulators and devices; Control units, apparatus and systems; Components for electric circuits; Buzzers; Tanks; Keyboards; Ultrasound sensors; Monitoring instruments, apparatus, regulators and devices; USB flash drives; Valves; Scales; Gear pumps; Central processing units; Parts, spare parts and fittings for the aforesaid goods.

Class 11: Lighting apparatus and installations; Alternators; DC generators; Electric screed heaters; Gas filters; Power generators; heating components; Heating apparatus and installations; Heating rods; Insulating material; Refrigerating apparatus and installations; Luminaires; Light reflectors; Air filters; Air, gas and water purifying apparatus and installations; Ventilation apparatus and installations; Pumps; Radiators; Vehicle headlamps; Pocket searchlights; Ventilating and air conditioning apparatus and installations; Water filters; Water supply apparatus and installations; Parts, replacement parts and fittings for all of the aforesaid goods.

Class 12: Vehicles; Transport means; Towing trucks; Parts, replacement parts and fittings for the aforesaid goods, in particular strippers, drive units, floor boards, braking installations, brakes, brake segments, brake linings, brake calipers, rims, couplings, wheels, tyres, crawler tracks, chains, drives, motors and engines, windscreen wipers, mirrors, machine transmission components.

Class 20: Model vehicles not of metal; Parts, replacement parts and accessories for the aforesaid goods.

Class 28: Model vehicles and machines (miniatures); Model vehicles and machines (playthings); Toys; Games; Playthings and curiosities; Sporting articles and equipment; Parts, accessories and spare parts for all the aforesaid goods.

Class 35: Wholesaling, retailing and international trade, including by means of mail order catalogues or with the aid of electronic media, namely of the following goods: model vehicles and; batteries, battery chargers, navigation, orientation, positioning, location tracking, target tracking and mapping apparatus and instruments; headlights, vehicles, conveyances, drives, motors and engines, windscreen wipers, mirrors, closures; model vehicles not of metal, model vehicles (ornaments) of stone, glass or porcelain, scale model vehicles and machines, model vehicles and machines (toys), toys, games, playthings and novelties, sporting articles and equipment, and parts, replacement parts and fittings therefor.

Class 41: Providing of training; Education; Education; Organisation, arranging and conducting of courses, workshops and seminars; Courses, in particular relating to occupational safety and the operation, use, repair and maintenance of vehicles, and parts therefor; Driving instruction; Rental and leasing of objects in connection with providing the aforesaid services; Advisory, information and consultancy services relating to any of the aforesaid services.

Class 42: Consultancy relating to the operation of vehicles, and parts therefor; Design services; Design and development of computer hardware and software; Product research and development; Development of vehicles, and parts therefor; Troubleshooting and fault diagnosis relating to computer hardware, computer software, mechanical engineering products, vehicles, and parts therefor; Remote control, remote monitoring, remote maintenance, electronic location tracking; Research in the fields of mechanical engineering; Engineering services; IT services; Testing, safety testing, technical testing, authentication and quality control; Technical consultancy in the field of telematics; Engineering design and consultancy; Technical development of models and concepts to be implemented for the operation, production and logistics of commercial enterprises; Technical testing services; Rental and leasing of objects in connection with providing the aforesaid services; Consultancy and information relating to the aforesaid services.

Some of the contested goods and services are identical or similar to goods 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 goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be higher than average, in particular for the opponent`s ‘cars’.

Taking into consideration the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42).

c) The signs

VOGUE	VÖGELE
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 contested sign ‘VÖGELE’ could be perceived by the German speaking public as a diminutive form for the word ‘Vogel’ which is ‘Bird’ in English. For the remaining part of the public this word is meaningless.

The earlier sign ‘VOGUE’ would be understood in some parts of the European Union, like in France, Germany and the United Kingdom as something related to ‘fashion’ or ‘popularity’. In the remaining part of the European Union, e.g. Spain, Poland or Portugal this word is meaningless.

For reasons of procedural economy the Opposition Division proceeds with the assessment of the signs for the public for which neither of the signs has a meaning and they are distinctive. Therefore the arguments of the applicant about the weak distinctive character of the earlier sign in relation to ‘cars’ are not relevant.

Visually, the signs coincide in the letters ‘V*G*E*’ and in the similarities between the letters ‘Ö’ and ‘O’. However, they differ in the letters ‘*LE’ of the contested sign and in the letter ‘*U’ of the earlier sign, as well as in the umlaut of the letter ‘O’ of the contested mark.

The signs are not particularly long so that the public will immediately spot the differences. Therefore, the signs are similar to a lower than average degree.

Aurally, the Opposition Division considers that the majority of the relevant public will pronounce the letter ‘Ö’ in the word ‘Vögele’ like the letter ‘O’ since it does not exist as such in most of the European languages. The pronunciation of the word 'Vogue’ depends on whether or not the targeted consumers recognise that word as a French word. If so it would be pronounced as ‘vog’ or ‘voug’. That part of the public which does not recognise the word 'vogue’ as originating from French would pronounce it according to its own rules.

For example in Spanish the pronunciation would be ‘bo-ge’ (for the word ‘Vogue’) and ‘bo-je-le’ (for the word ‘Vögele’), in Portuguese ‘vog’ and ‘vo-je-le’, in Bulgarian, Slovenian. Polish or Check ‘Vo-gu-e’ and ‘Vo-ge-le’.

Therefore for the part of the public which pronounces the word “Vogue” according to the French pronunciation rules the signs coincide in the sound of the letters ‘vog*’ and differ in the additional letters ‘*ele* of the contested sign. For that part of the public for which the letter ‘u’ changes the sound of the preceding letter ‘g’ like for Spanish- or Portuguese-speakers the signs coincide in the sound of the letters ‘vo*’ or ‘vo*e*’ only. For this part of the public the signs are similar to a lower than average degree.

For the part of the public which doesn’t see a French word the signs would coincide in the sound of the letters ‘vog*e*’ and they differ in the sound of the additional letter ‘u’ of the earlier sign and the additional letters ‘le’ of the contested sign. Therefore the signs would be similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with the goods for which it is registered and use is proven, namely ‘cars’.

The evidence submitted by the opponent in order to prove the high distinctive character of the trade mark on which the opposition is based, has already been examined above.

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

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 conflicting goods and services were assumed to be identical. The signs are visually lowly similar and aurally similar to an average degree for at least part of the public and there is no concept which would help to differentiate the signs.

Even considering that - as already stated above - the conflicting signs coincide in some letters the Opposition Division considers that the remaining differentiating letters are sufficient to prevent a likelihood of confusion for the relevant public. The overall impression of the conflicting signs ‘VÖGELE – VOGUE’ – taking also into account that the signs are not particularly long so that the public will immediately spot the differences - is sufficiently far removed so that the relevant public can easily differentiate between the two signs.

This the more so, taking into consideration that the degree of attention is considered to be higher than average and the differences between the signs will not go unnoticed by the relevant consumers.

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

This absence of a likelihood of confusion equally applies to the part of the public for which the words ‘Vögele’ and/or ‘Vogue’ have a meaning. This is because, as a result of the conceptual differences between the signs, that part of the public will perceive the signs as being even less similar.

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

Denitza STOYANOVA-VALCHANOVA

Reiner SARAPOGLU

Astrid WABER

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.