OPPOSITION No B 2 997 099

IVI GmbH, Gilbachstrasse 22, 50672 Köln, Germany (opponent), represented by CBH Rechtsanwälte Cornelius Bartenbach Haesemann & Partner, Tesdorpfstrasse 8, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Xixi Yu, C/ Moli de la Llum, N° 2 Pta. 3, 46940 Manises/Valencia, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -4° Of. 412, 28013 Madrid, Spain (professional representative).

On 26/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 997 099 is upheld for all the contested goods, namely:

Class 18: Luggage, bags, wallets and other carriers; shoulder belts; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; kid; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leatherboard; cases of leather or leatherboard; casings, of leather, for springs.

Class 25: Headgear; footwear; clothing.

2. European Union trade mark application No 17 194 507 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 194 507 for the figurative mark , namely against some of the goods in Class 18 and all the goods in Class 25. The opposition is based on European Union trade mark registration No 9 302 481 for the word mark ‘IVI collection’. 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.

1. The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials (included in Class 18); animal skins, hides; trunks and travelling bags; umbrellas; parasols and walking sticks; change purses.

Class 25: Clothing; footwear; headgear.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; shoulder belts; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; kid; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leatherboard; cases of leather or leatherboard; casings, of leather, for springs.

Class 25: Headgear; footwear; 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.

Contested goods in Class 18

The contested luggage and other carriers overlap with the opponent’s trunks. These categories cannot be clearly separated and, therefore, the goods are considered identical.

The contested bags include, as a broader category, the opponent’s travelling bags. 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 kid (being the soft smooth leather made from the hide of a kid) is included in the broad category of the opponent’s leather and imitations of leather. Therefore, they are identical.

The contested leatherboard is included in the broad category of the opponent’s leather and imitations of leather. Therefore, they are identical.

The contested wallets (pocket-sized flat folding cases for holding paper money, credit cards and other items, including coins) are similar to a high degree to the opponent’s change purses, which are small pouches of leather or plastic used for carrying money. These goods have the same nature, target the same public and serve the same purpose, that of carrying money. They may be marketed by the same manufacturers through the same distribution channels.

The contested toiletry bags sold empty and the opponent’s travelling bags in Class 18 are highly similar, as they have the same purpose and nature. They usually have the same producers, relevant public, distribution channels and method of use.

The contested cases of leather or leatherboard; casings, of leather, for springs; boxes of leather or leatherboard; imitation leather hat boxes and boxes made of leather are similar to the opponent’s travelling bags, since they have the same purpose and are produced by the same companies. Moreover, these goods are sold through the same channels to the same public and are also in competition.

The earlier mark is registered for leather and imitations of leather, and goods made of these materials (included in Class 18). According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the term goods made of leather and/or imitations of leather in Class 18 lacks the clarity and precision to specify the scope of protection that it gives, as it does not provide a clear indication of the goods covered, as it simply states what the goods are made of, and not what the goods are. Goods made of leather or imitations of leather — when not specified — can have different characteristics or different purposes, can target different consumers, can be sold through different sales channels and therefore can relate to different market sectors. These goods in Class 18 can be generally defined as any items not included in other classes in the manufacture of which leather or imitation leather is used as the main raw material.

When comparing the contested shoulder belts; shoulder belts [straps] of leather; chin straps, of leather with the opponent’s goods made of leather, their nature can be considered the same, as they are or include goods made of the same raw material and it is reasonable to infer that the goods may be produced by the same companies, given that the required know-how and machinery (to cut and sew the raw material etc.) may also be the same. However, in the absence of an express limitation by the opponent clarifying the vague term for which its mark is registered, it cannot be assumed that the methods of use or distribution channels are the same, or that the goods are in competition or complementary. Therefore, the goods are found to be similar to a low degree.

Contested goods in Class 25

Headgear; footwear; clothing are identically contained in both lists of goods.

2. 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 varying degrees are directed at both the public at large and professionals in various industries.

The degree of attention varies from average to higher than average depending on the nature, degree of specialisation, frequency of purchase and price of the goods.

3. The signs

IVI collection
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.

The contested sign is a figurative mark consisting of the element ‘IVI05Chino’, depicted in very standard characters.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Although signs should not be artificially dissected, it must be taken into account that when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known to the public perceiving it, it is likely that they will perceive those familiar parts as separate elements in the mark.

The element ‘Chino’ will be understood by the Spanish-speaking part of the public as referring to casual trousers made of chino fabric or to the fact that the relevant goods come from China (‘Perteneciente o relativo a China o a los chinos’; information extracted from El Diccionario de la lengua española on 8/10/2018 at http://dle.rae.es/?id=8pma6mE|8pnMy5C|8ppm97c). Since this element may be perceived as describing some of the relevant goods (i.e. clothing) or as referring to the place of origin or the distribution channels of the relevant goods, it is of very limited (if any) distinctiveness.

The element ‘05’ conveys the concept of the number five. In the context of the contested sign as a whole and considering the relevant goods, it is conceivable that the public will perceive the combination of two numbers ‘05’ as a series or collection number for clothes or other products, and therefore as having a secondary role.

Furthermore, in the present case, the elements ‘IVI’, ‘05’ and ‘Chino’ are clearly distinguishable as separate elements on account of the particular structure of the sign and the alternation of letters/words and numbers. The element ‘IVI’, in Spanish, does not convey any meaning and is of average distinctiveness, and it is, moreover, the first element of the sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (‘IVI’) the one that first catches the attention of the reader.

The earlier mark is the word mark ‘IVI collection’. It contains the verbal element ‘IVI’ (which, as explained above, has no meaning for the relevant public and is therefore distinctive). The element ‘collection’, due to its similarity to the Spanish word ‘colección’ and the fact that ‘collection’ is an English word that is widely used throughout the EU in relation to the relevant goods, will be understood as, inter alia, ‘Conjunto de las creaciones que presenta un diseñador de moda para una temporada’, that is a gathering of things, or a fashion designer’s new clothes designed for the next season’ (information extracted from Collins English Dictionary on 8/10/2018 at https://www.collinsdictionarv.com/dictionarv/enalish/collection and El Diccionario de la lengua española on 8/10/2018 at http://dle.rae.es/?id=9kNsBXU). Therefore, it is a non-distinctive element that will be perceived by the entire relevant public as an assembly of items included among the relevant goods.

Taking into account the considerations set out above regarding the concepts conveyed by the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, since for it, the coinciding parts of the marks are found in the elements that have a greater impact, and the elements from which their main differences arise have a limited impact, for the various reasons explained in detail. These consumers are therefore considered to be those for whom likelihood of confusion is most likely to arise.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their beginnings, ‘IVI’. However, they differ in the word ‘collection’ of the earlier mark, and in the numbers ‘05’ and the word ‘Chino’ in the contested sign.

Bearing in mind the explanations provided above, the additional element of the earlier mark, ‘collection’, and those of the contested sign, ‘05 and ‘Chino’, are secondary to the signs’ beginnings, ‘IVI’, since the first part of a word mark has a stronger impact on the public as an indicator of commercial origin. Therefore, the public will focus on the identical first verbal elements of the marks.

Taking into account the limited impact of the differing elements and the greater impact of the coinciding parts, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables [i] and [vi], present identically in both signs. The pronunciation differs in the sounds of the numbers ‘05’, in Spanish, and of the words [chino] of the contested sign and [collection] of the earlier mark.

Taking into account the limited impact of the differing elements and the greater impact of the coinciding parts, it is considered that the signs are aurally similar to an average degree.

Conceptually, the differing elements (‘collection’, ‘05’ and ‘Chino’) convey the concepts indicated above, whereas the remaining elements of the signs convey no concept. Therefore, the signs are not conceptually similar, as the aforementioned elements will be associated with different meanings. However, this conceptual difference has a limited impact on the overall impression conveyed by the signs, because the public will focus instead on the meaningless fanciful elements located at the beginnings of the signs, which are identical: ‘IVI’.

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 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 (‘collection’), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

Account must also be 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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

As concluded above, the contested goods are identical or similar to varying degrees to the opponent’s goods. The goods target the public at large and professionals, and the degree of attention varies from average to high. The earlier mark is distinctive to an average degree.

The signs are visually and aurally similar to an average degree and not conceptually similar, as explained in section c) above. However, this conceptual difference has a limited impact on the overall impression conveyed by the signs, as it is due to the elements ‘collection’ of the earlier mark and ‘05’ and ‘Chino’ of the contested sign, which are located in somewhat secondary positions in the signs and are either non-distinctive or likely to be perceived as descriptive indications of a new version or model of a product designated primarily by the element ‘IVI’.

It should also be noted that the identical element ‘IVI’ is considered distinctive as a whole and that, consequently, the earlier mark has an average degree of inherent distinctiveness.

Although the signs have some differences, these differences will have a lesser impact on the relevant consumers than their coinciding distinctive beginnings, ‘IVI’.

Therefore, given that the distinctive first element of the earlier mark, ‘IVI’, is reproduced in its entirety in the contested sign, with the addition of ‘05’ and ‘Chino’ at the end, it is likely that the relevant public (including the professionals, even when displaying a high degree of attention) will at least associate the contested sign with the earlier mark. The concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the identical goods come from the same undertaking or at least economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part 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.

This conclusion furthermore stands for the contested goods that have been found to be similar to a low degree. This is because the similarity between the signs is great enough to lead to a likelihood of confusion even in relation to goods that have only a low degree of similarity.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 302 481. 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, she 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

Denitza STOYANOVA-VALCHANOVA

Gonzalo BILBAO TEJADA

Martin EBERL

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.