OPPOSITION No B 2 911 835

Yakovleva Elena Vassa Borisovna, KV.29, D.20, UL. Arbat, 119002 Moscow, Russia (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 — 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Hangzhou Nice Clothing Co. Ltd., Hutouchen Industrial Zone, Chengxiang Street, Xiaoshan, Zhejiang, Hangzhou, People’s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).

On 16/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 911 835 is upheld for all the contested goods.

2. European Union trade mark application No 16 335 903 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 335 903 . The opposition is based on international trade mark registration No 914 024 designating the European Union ‘VASSA’. The opponent invoked Article 8(1)(b) EUTMR.

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 international trade mark registration No 914 024 designating the European Union ‘VASSA’.

The date of filing of the contested application is 09/02/2017. 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 09/02/2012 to 08/02/2017 inclusive.

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.

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

Class 25: Bandanas; underwear; overalls; boas; boots; breeches; trousers; football shoes; brassieres; collars (clothing); shirt yokes; veils (clothing); galoshes; neckties; ascots; leggings; gaiters; vests; sports jerseys; hosiery; heels; pants; teddies; hoods (clothing); pocket squares; collar protectors; sun visors; tights; combinations (clothing); wet suits for water-skiing; suits; swimsuits; masquerade costumes; beachwear; jackets; fishing vests; liveries; camisoles; tee-shirts; wristbands; chemisettes; mantillas; coats; mittens; muffs; heelpieces for shoes; fur stoles; ear muffs; socks; bath slippers; beach shoes; footwear; gabardines; jerseys (clothing); clothing of leather; uniforms; overcoats; parkas; pelerines; gloves; pajamas; bathing trunks; scarves; frocks; headbands; sock suspenders; dress shields; suspenders; lace boots; belts (clothing); money belts (clothing); layettes (clothing); pullovers; chasubles; shirts; sandals; boots; saris; sweaters; inner soles; togas; underpants; gymnastic shoes; slippers; shoes; turbans; berets; hats; caps; aprons (clothing); dressing gowns; tips for footwear; shower caps; stockings; shawls; skull caps; bathing caps; sashes; pelisses; skirts; petticoats.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 08/08/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent, after an extension of the time limit, until 01/01/2018 to submit evidence of use of the earlier trade mark. On 27/11/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• Annex 1: an extract from the Russian Unified State Register of Legal Entities. The document indicates that the opponent is the founder of Vassa Limited Liability Company, with 25% of shares.

• Annex 3: this annex makes reference to Vassa’s expansion into the German market. This document provides indications of the place of use (Germany) and time of use (2011-2013) and makes reference to a huge range of clothing products.

• Annex 4.1

• The first document makes reference to the Export Contract between Vassa Limited Liability Company and Arimedo Limited Liability Company. This document provides an indication of the place of use, as Arimedo is entitled to use the trade mark ‘VASSA & CO’ in the territory of Germany. The relevant period is 2015 and the products concerned are all kinds of sewn products and accessories.

• The second document is a supplementary agreement to the contract referred to above. The place of use is Germany. The relevant period is 2015 and the products concerned are all kinds of sewn products and accessories. The products are mainly jackets, waistcoats, blouses, skirts, trousers, shorts and dresses.

• The third document consists of copies of import documents. They are declarations of goods and bills of entry. These documents provide an indication of the place of use, as the goods were sent to Arimedo in Germany. The relevant period is 2014 and 2015 and the products concerned bear the trade mark ‘VASSA & CO’ and include accessories, belts, jerseys, scarves, coats, dresses, jackets, skirts, trousers, blouses and waistcoats.

• Annex 4.2

• The first document is an invoice from Vassa to Arimedo. This document provides an indication of the place of use, as it is addressed to Arimedo in Germany. The relevant period is February 2015 and the products concerned bear the trade mark ‘VASSA & CO’ and include jumpsuits, waistcoats, jackets, blouses, skirts, pants, shorts and dresses.

• The second document is an import form (‘declaration of goods’) for the products indicated above.

• The third document is also an import document. It is an ‘International consignment note’.

• The fourth document is a ‘consignment note’. All the documents in Annex 4.2 provide indications of the place of use, as they make reference to products sent to Arimedo in Germany. The relevant period is 2015 and the products concerned bear the trade mark ‘VASSA & CO’ and include blouses, jackets, waistcoats, pants, dresses and jumpsuits.

• Annex 5: this annex is a declaration of goods sent by Vassa to the New Fashing group LLC in Germany. All the documents provide indications of the place of use (Germany) and the time of use (2015 and 2016), and the products concerned bear the trade mark ‘VASSA & CO’ and include women’s textile clothes, skirts, vests, shorts, blouses, jackets, coats, pants, dresses and jumpsuits.

• Annex 9

• Images of clothes bearing the trade mark ‘VASSA & CO’. The images are dated 2015.

• Images of boxes containing ‘VASSA & CO’ products. The addressee is Arimedo in Germany and the images are dated March 2015.

• Images of a clothes shop named ‘VASSA & CO’. Image No 5 is dated 2014-2015.

Place of use

The invoice and import documents submitted, such as the declarations of goods and bills of entry, demonstrate sales of products by the opponent, with an address in Russia, to companies with addresses in Germany. The information provided by these documents is supported by some of the other documents, namely the contract signed between the opponent and a German company entitled to use the trade mark ‘VASSA & CO’ in the territory of Germany, and the evidence showing that a shop has been opened in Germany. Therefore, the evidence relates to the relevant territory.

Time of use

All of the evidence is dated within the relevant period. Therefore, the opponent has provided sufficient indications concerning the time of the use of the earlier mark.

Extent of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoice and the import documents, namely the declarations of goods, bills of entry and consignment notes, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence submitted by the opponent in order to prove genuine use of the earlier mark relates exclusively to Germany. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

As stated above, the main information as regards the extent of the opponent’s activities comes from the invoice and the import documents, namely the declarations for goods, bill of entry and consignment notes, which demonstrate sales during two years within the relevant period (2015-2016). Although these documents reflect use upon importation in the relevant territory between companies, the Opposition Division is, nevertheless, of the opinion that the evidence submitted, in its entirety, provides sufficient indications to allow the conclusion that the use of the earlier mark for the import of goods to Germany from another state did indeed constitute use in the context of commercial activities with a view to obtaining an economic advantage. These documents prove the frequency of use of the mark throughout the relevant period. The invoice refers to sales of several thousand euros. The evidence provides sufficient information concerning the commercial volume of use. It is clear from the evidence that the opponent distributed goods bearing the earlier mark in Germany with a view to establishing a market for the goods. The documents submitted contain relevant indications of the nature and scale of the opponent’s activities. Such use is therefore more than just a private matter.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of § 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark is registered as the word mark ‘VASSA’. The documents show the sign VASSA & Co. used in relation to various types of clothing.

The combination ‘& Co’, displayed at the end of the sign, is an indication universally used in a commercial context to refer to the company, group or undertaking producing the goods or providing the services. The distinctiveness of this element is very low. Therefore, because of its lack of distinctive character and its ancillary position, this addition does not alter the distinctive character of the mark in the form in which it was registered.

Furthermore, the use of a slightly stylised typescript constitutes an acceptable means of bringing the sign in question to the public’s attention and consequently does not affect the distinctiveness of the earlier word mark ‘VASSA’.

In view of the above, the Opposition Division considers that the evidence does show use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

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 present case, the evidence shows genuine use of the trade mark for the following goods:

Class 25: Trousers; vests; pants; jackets; coats; jerseys (clothing); scarves; belts (clothing); skirts.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

1. The goods

The goods on which the opposition is based are the following:

Class 25: Trousers; vests; pants; jackets; coats; jerseys (clothing); scarves; belts (clothing); skirts.

The contested goods are the following:

Class 25: Pullovers; jumpers; sweaters; padding coats; shirts; outerclothing; knitwear [clothing]; vests; coats; tee-shirts; trousers; dresses; topcoats; stuff jackets [clothing]; jackets [clothing]; parkas; clothing of imitations of leather; windbreakers; down garments; clothing.

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.

Vests; coats; trousers; jackets [clothing] are identically contained in both lists of goods.

The contested clothing includes, as a broader category, the opponent’s trousers. 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 outerclothing includes, as a broader category, the opponent’s coats, and the contested knitwear [clothing] includes, as a broader category, the opponent’s pants. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested clothing of imitations of leather overlaps with the opponent’s vests. Both could include vests of imitations of leather. Therefore, they are identical.

The contested stuff jackets [clothing]; parkas; windbreakers; down garments are included in the broad category of, or overlap with, the opponent’s jackets. Therefore, they are identical.

The contested padding coats; topcoats are included in the broad category of the opponent’s coats. Therefore, they are identical.

The contested pullovers; jumpers; sweaters; shirts; tee-shirts; dresses are similar to a high degree to the opponent’s trousers; jerseys (clothing); skirts. They are all goods that are manufactured to cover, protect and clothe the human body. Therefore, they might easily have the same end consumers and can all be manufactured by the same undertakings. All the goods at issue can be found in the same shops or in closely connected sections of department stores.

1. 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 or similar to a high degree are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

VASSA
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 is a figurative mark that consists of the verbal elements ‘MS’ and ‘VASSA’ written in bold upper case letters and in a standard typeface. A dot is depicted between these two elements.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘MS’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as French and Spanish speakers, for whom this element is meaningless and therefore distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

The element ‘VASSA’, which the signs have in common, and the letters ‘MS’ in the contested sign have no meaning for the public in the relevant territory. Consequently, the distinctive character of these elements in relation to the goods concerned is normal.

Visually and aurally, the signs coincide in the word ‘VASSA’, which constitutes the entire earlier mark. The marks differ in the additional first element ‘MS’, followed by a dot, in the contested sign, and in the sound of these letters, which have no counterparts in the earlier mark. The dot in the contested sign has no bearing on the aural comparison. Although the signs further differ in the typeface of the letters in the contested sign, it is a standard typeface.

Therefore, the signs are visually and aurally similar to a high 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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 her 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 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.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As concluded above, the goods are identical or highly similar.

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large with an average degree of attention.

The signs are visually and aurally similar to a high degree. They have no concept that could serve to divert consumers’ attention from the identical word ‘VASSA’ in both marks.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26). This is the case here, since the contested sign reproduces the earlier mark in its entirety.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the French‑ and Spanish‑speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 914 024 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Inés GARCÍA LLEDÓ

Richard BIANCHI

Marta GARCÍA COLLADO

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.