OPPOSITION No B 3 050 157

Martin Lubrano, San Martín 793, piso 18º, Dpto. C, 1004, Buenos Aires, Argentina (opponent), represented by Pedro Maria García-Cabrerizo y del Santo, Vitruvio 23, 28006 Madrid, Spain (professional representative)

a g a i n s t

Loving Vincent spółka z ograniczoną odpowiedzialnością, Al. Niepodległości 881G, 81-861 Sopot, Poland (applicant), represented by Leśnodorski Ślusarek and Partners, Szara 10, 00-420 Warszawa, Poland (professional representative).

On 30/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 157 is partially upheld, namely for the following contested goods:

Class 18: All the contested goods in this class.

Class 24: Textiles and substitutes for textiles.

Class 25: Clothing; footwear; hats.

2. European Union trade mark application No 16 993 503 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 993 503 for the word mark ‘LOVING VINCENT’, namely against all the goods in Classes 3, 14, 18, 24 and 25. The opposition is based on European Union trade mark registration No 16 559 825 for the figurative mark . 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.

a) The goods

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

Class 18: Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.

Class 25: Clothing; footwear; headgear.

The contested goods are the following:

Class 3: Cosmetics; dentifrices; non-medicated cosmetics; fragrances; perfume.

Class 14: Precious metals and their alloys; jewels; precious or semi-precious stones; horological and chronometric instruments.

Class 18: Leather and imitation leather; animal skins; luggage and carrying bags; umbrellas; parasols; walking sticks; whips, harness and saddlery; wallets; collars, leads and clothing for animals.

Class 24: Textiles and substitutes for textiles; linens; curtains of textile or plastic.

Class 25: Clothing; footwear; hats.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Identity or similarity of the goods in question must be determined on an objective basis.

Some of the opponent’s comments concern goods in more than one class, because of that they will be commented upfront.

The opponent argues that some goods are similar to others, because they have ‘affinity’ or even ‘strong affinity’ for each other. The ‘affinity’ is not amongst the reasons, pointed by the Courts, for finding similarity between goods or services. Moreover, the arguments by which the Opponent tries to justify the affinity, namely that the goods are similar because they can be worn at the same time and with a purpose to express the style of their owner, are vague and in fact applicable to a huge variety of goods that are not similar according to the accepted criteria for similarity. In the light of the above the claimed ‘affinity’ is not a reason that may justify a similarity between the contested goods in Classes 3 and 14 and the opponent’s goods in Classes 18 and 25.

Also the reference that well-known trademarks sell goods under the same brand from Classes 3 and 14, but also from 18 and 25, is not sufficient as it refers to rather exceptional cases and not to the usual market practice. Therefore these arguments for similarity must be set aside.

The usual circumstances in which the goods covered by the marks are marketed as its benchmark are the ones which must be taken into account, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of identity or similarity of the goods or the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (19/04/2016, T 326/14, HOT JOKER / JOKER et al., EU:T:2016:221, § 64;15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). In this particular case, contrary to the applicant’s statements, it is irrelevant if the contested goods are marketed as merchandise of a film or that the opponent’s goods are promoted as luxury products, if both of them have protection for the goods as registered, they can change their marketing strategy at any time for the entire European Union.

Contested goods in Class 3

The opponent’s goods in Class 18 are raw materials, different kind of carrying bags, umbrellas and walking sticks, as well as goods for animals made of leather or animals clothing while the main purpose of the opponent’s goods in Class 25 is to dress and protect different parts of the person.

The contested goods in Class 3 are cleaning products, products for dental care and beauty products to be applied on the human body, which is not the case with any of the opponent’s goods as evident from the above explanation. Consequently, the nature of the contested goods is different from that of the opponent’s goods, they usually have different manufacturers and are not complementary or in competition. Moreover the distribution channels and the relevant public do not usually coincide. Therefore the goods are dissimilar.

Contested goods in Class 14

By analogy, the same reasoning applied above in relation to the contested goods in Class 3 is valid equally for the contested goods in Class 14. These goods are precious raw materials (including stones); jewels and time instruments. As evident from the explanation above, the nature of the goods in Classes 18 and 25 is totally different from that of the contested goods. Furthermore, the goods differ in their purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kind of undertakings. The argument for ‘affinity’ between the goods is also not a ground for similarity, for the same reasons as for the goods in Class 3.

Therefore, the contested goods are dissimilar to the opponent’s goods.

Contested goods in Classes 18

Leather and imitation leather; animal skins; luggage and carrying bags; umbrellas; parasols; walking sticks; whips, harness and saddlery; collars and clothing for animals are identically contained in both lists of goods (including synonyms). The contested leads overlap with the opponent’s leashes. Therefore, they are identical.

The contested wallets are similar to the opponent's carrying bags, as they target the same public, have the same distribution channels and usually have the same commercial origin.

Contested goods in Class 24

The contested textiles and substitutes for textiles are similar to the opponent’s leather and imitations of leather in Class 18 as they have the same purpose. They usually coincide in relevant public. Furthermore they are in competition.

However, the remaining contested linens; curtains of textile or plastic are dissimilar to the opponent’s leather and imitations of leather in Class 18 as, being finished goods, they do not have the same purpose and are not in competition. The fact that these goods could conceivably be purchased by the same consumers is in itself insufficient for a finding of similarity between them.

Moreover, these contested goods do not have any relevant points of contact with the opponent’s remaining goods in Class 18 (which includes mainly certain goods made of those materials along with various types of bags and umbrellas); therefore they are dissimilar.

The main commonality between the contested linens; curtains of textile or plastic and the opponent's goods in Class 25 is that they may be made of the same material, textile or its substitutes as plastic. However, this fact on its own is not enough to justify a finding of similarity. These particular goods serve different purposes. The opponent's goods are meant to cover the human body and protect it from the elements, whereas the contested goods are textile or plastic goods, for household purposes and interior decoration. Consequently, their method of use is different. Moreover, the distribution channels and sales outlets of the opponent's goods in Class 25 and the contested textile or plastic goods are different and the relevant public will not think that they originate from the same undertaking. Therefore, the abovementioned contested goods are dissimilar to the opponent's goods in Class 25.

Contested goods in Class 25

Clothing; footwear; hats are identically contained in both lists of goods (including synonyms).

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 or similar are directed at the public at large and at business customers (with respect to some of the relevant goods in Classes 18 and 24). In the present case the degree of attention of both groups of consumers will be average.

However, the applicant argues, that ‘the relevant public is made up of people who know and show affection for the animated film entitled ‘Loving Vincent’ wanting to buy products and gadgets related to this film’. Such a limitation of the relevant public, respectively enhancing of the degree of attention, is artificial and not substantiated. There is nothing in the nature of the goods that may lead to the conclusion that the goods will be bought only from persons who are aware of the existence of the film and who are looking for goods related to the film. Therefore the degree of attention is not higher than average.

c) The signs

	LOVING VINCENT
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 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.

As the contested sign contains the English word ‘LOVING’, the Opposition Division will focus the comparison of the signs on the English-speaking part of the public.

The contested sign is a word mark and as such the words are protected, and not their written form. Therefore, it is irrelevant whether the contested sign is represented in upper- or lower-case, or in a combination thereof. For the same reasons, word marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

The relevant public will perceive the contested sign as a semantic unit referring to a male person called Vincent who is showing a lot of love to someone. The element ‘VINCENT’ is distinctive as it does not describe any characteristics of the goods.

While it is clear that the consumer normally attaches more importance to the first part of the sign, this assumption does not, however, hold good in all cases. It cannot, in any event, and also in this case, undermine the principle, expressed in the case-law, that the examination of the similarity between marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not examine its individual details. In the present case, it is the noun rather than the adjective which determines the conceptual perception of the sign at issue. The word element ‘LOVING’ is immediately understood by the relevant public as an adjective which qualifies the word ‘VINCENT’. For that reason, to assess the distinctiveness of that word element on its own, rather than in the context of the sign taken as a whole, would represent an ‘artificial dissection’ of the sign at issue. Since the qualifying adjective ‘LOVING’ is intrinsically bound to the noun ‘VINCENT’, the sign has to be read as a whole, as an entire expression (see by analogy 12/09/2018, T‑905/16, NUIT PRECIEUSE (fig.) / EAU PRECIEUSE, EU:T:2018:527, §63).

In the earlier mark, the word ‘VINCENT’, besides of being distinctive, is also the dominant element. This is because it is placed on first position and at the top of the mark, occupying the entire first line, and it is also presented in the largest type font in comparison with the remaining elements. Moreover, the surrounding frame visually separates it and once again underlines its importance and dominancy. The frame is of a purely decorative nature.

The expressions ‘Buenos Aires’ and ‘Argentina’ are non-distinctive, as they will be understood by the relevant public as a reference of the place of production of the goods or of the origin of the producer. Additionally, these elements are non-dominant, because, they are presented with significantly smaller type font in comparison with the first element ‘VINCENT’ and moreover are placed in a secondary position.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the earlier mark, there is an element namely ‘www. vincentba.com’ that is barely perceptible. As this element is likely to be disregarded by the relevant public, it will not be taken into consideration.

Conceptually, the distinctive word and male name ‘VINCENT’ is contained in both signs. The signs differ in the presence of additional elements in the earlier mark which however are non-distinctive, negligible or decorative and in the adjective ‘LOVING’ qualifying the male name in the contested sign.

Although, part of the public may relate the sign with the movie ‘Loving Vincent’, as stated in the applicant’s observation, this is not the majority of the public and does not exclude in any case the usual and ordinary understanding of the sign based on the meaning of its elements.

Therefore, taking into account all above, the signs at issue are conceptually similar to an above average degree, due to the coincidence in the element ‘VINCENT’.

Visually, the signs coincide in the distinctive element ‘VINCENT’, which moreover is dominant in the earlier mark. The fact that the dominant and distinctive verbal element of the earlier mark is entirely reproduced in the contested sign constitutes an indication of visual similarity between the signs (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T-372/09, Gold Meister, EU:T:2011:97, § 27). The remaining verbal elements of the earlier mark, by the reason explained above, are of secondary importance. The element ‘LOVING’ of the contested sign is a differentiating element. Therefore, the signs are visually similar to an average degree.

Aurally, the contested sign will be pronounced as ‘LOVING VINCENT’.

The earlier mark will be pronounced only as ‘VINCENT’, as the other elements are non-dominant and non-distinctive. Moreover, consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLR-G5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56).

Therefore, the signs coincide in the pronunciation of the distinctive word ‘VINCENT’ presents in both signs. In consequence, the signs are aurally similar to an average degree.

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

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. 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).

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 covered are from the same or economically linked undertakings.

The signs at issue have been found to be conceptually similar to an above average degree, and visually similar and aurally similar to an average degree. The goods are partly identical, partly similar and partly dissimilar. The earlier mark possesses normal distinctiveness and the relevant goods are directed at the public at large and at business customers with an average degree of attention.

In the present case, the Opposition Division considers that the similarities between the marks at issue, due to the coincidence in the distinctive element ‘VINCENT’ which is moreover the dominant one in the earlier mark, outweigh the differences arising principally from the element ‘LOVING’ of the contested sign, which will have less impact on the relevant public, given that it will be perceived as qualifying the said coinciding element.

Additionally, even if the contested sign introduces the additional verbal element ‘LOVING’, which is not present in the earlier mark, the coinciding verbal element ‘VINCENT’ is distinctive to a normal degree for the relevant public and plays an independent distinctive role in the contested sign without necessarily constituting the dominant element (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30).

As to the remaining differentiating elements of the earlier mark, they are either non-distinctive and non-dominant or negligible in its overall impression.

Therefore, it is highly conceivable that the relevant consumer will perceive contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

In its observations, the applicant argued that there are many trade marks which include the element ‘VINCENT’. In support of its argument the applicant refers to one hundred trade mark registrations valid in the European Union. The information is extracted from TMView.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘VINCENT’. Under these circumstances, the applicant’s claims must be set aside.

It follows from the above that the contested trade mark must be rejected for the goods found to be at least similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Riccardo RAPONI

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.