OPPOSITION No B 3 029 843

E. M. Group Holding AG, Hettlinger Str. 9, 86637 Wertingen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Rafael Juan Mas Hernandez, C/ Almansa nº 36-2, 03206 Elche, Spain (applicant), represented by Inmaculada Rodes Cascales, C/ Juan Ramón Jiménez 8 bajo, 03203 Elche, Spain (professional representative)

On 06/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 843 is upheld for all the contested goods.

2. European Union trade mark application No 17 447 806 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 447 806 (figurative mark). The opposition is based on European Union trade mark registration No 14 843 122 (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.

1. The goods

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

Class 25: Clothing, footwear, headgear; workwear, occupational footwear and work headgear.

The contested goods are the following:

Class 25: Footwear.

The contested goods appear identically in the opponent’s list 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 are directed at the public at large and the degree of attention is considered to be average.

3. The signs

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 Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, because the common element ‘VEGA’ is, amongst others, a Spanish surname known to a sufficiently large part of the Spanish consumers. Consequently, the conceptual aspect of the current assessment plays an important role since it will have an impact on the level of similarity between the signs.

The earlier mark is a figurative mark composed of the word ‘VEGA’ in thick black capital cursive and straight letters. Even though the word ‘VEGA’ can be recognized as, amongst others, a surname, it has no meaning in relation to the goods in question, and is therefore distinctive. The stylisation is considered to be of a purely decorative nature.

The contested sign is a figurative mark composed of the word elements ‘DANIELA VEGA’ in standard capital letters separated by a figurative element containing two X’s placed on top of each other. The sign has no elements that are visually more eye-catching than other.

Regarding the distinctive elements of the contested mark, it should be noted that surnames have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people, like ‘DANIELA’, who do not have anything in common, whereas the presence of the same surname could imply the existence of some link between them (identity of the persons or a family link). Therefore, family names generally have a higher degree of distinctiveness. As the contested mark ‘DANIELA VEGA’ as such will be perceived as a first name and a surname by the public in the relevant territory, the word ‘VEGA’ is thus considered more distinctive than the first element in the sign.

Visually, the signs coincide in the word ‘VEGA’, however, they differ in the first word element of the contested sign ‘DANIELA’ and its figurative element composed of two X’s.

Nevertheless, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the marks are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VEGA’, present identically in both signs. The pronunciation differs in the sound of the word ‘DANIELA’ of the contested sign, which has no counterpart in the earlier mark, but as mentioned above it is also less distinctive than the other element of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs contain the word ‘VEGA’ and will be perceived as, amongst others, referring to the same surname. The signs differ to the extent that the contested sign contains an additional element, namely the word ‘DANIELA’, which will be understood as a first name.

In view of the above, the signs are considered to be conceptually similar to an average degree for the part of the public that recognizes the surname.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C: 1999:323, § 18; 11/11/1997, C 251/95, Sabei, EU:C:1997:528, § 22).

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.

In the present case, the goods covered by the trade marks have been found identical and the level of attention of the relevant public is expected to be average. The distinctiveness of the earlier mark is considered normal.

The signs are similar to an average degree on all levels on the account of the common element ‘VEGA’, and more importantly for the part of the public that recognizes it as a surname. The applicant argues that the first part of the contested sign receives more attention from the consumer and that therefore the signs are different. Even if consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, the Opposition Division is of the opinion that this argument cannot prevail in all cases since, as explained, in this case the first element ‘DANIELA’ is less distinctive than the common element ‘VEGA’.

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).

Bearing this in mind and in view of the fact that the verbal element of earlier mark ‘VEGA’ is entirely reproduced in the contested sign and that its first element ‘DANIELA’ is less distinctive as it would be perceived as a first name having a lesser intrinsic distinctiveness than a surname, it is considered that there is a likelihood of confusion on, at least, the part of the Spanish-speaking 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.

In its observations, the applicant argues that it already owns registrations of the figurative trademark containing the words ‘DANIELA VEGA’ in the European Union and Spain which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Further, the applicant argues that there are many trade marks that include the word ‘VEGA’ and that therefore consumers do not associate all of them with the same company. In support of its argument the applicant refers to several trade mark registrations in the European Union.

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 data concerning a register 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 ‘VEGA’.

Therefore, in the absence of convincing arguments and evidence thereof, these arguments of the applicant must be rejected as unfounded.

Consequently, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 843 122. 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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Claudia ATTINÀ

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.