OPPOSITION No B 3 049 182

Stichting Escrow Beneluxmerken Vanilia, Burgemeester de Raadtsingel 31, 3311 JG, Dordrecht, Netherlands (opponent), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, Netherlands (professional representative)

a g a i n s t

Charterhouse Holdings PLC, Oakridge Park Trent Lane Castle Donington, DE74 2PY

Derby, United Kingdom (applicant), represented by Swindell & Pearson LTD, 48 Friar Gate, DE1 1GY, Derby, United Kingdom (professional representative).

On 15/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 182 is upheld for all the contested goods.

2. European Union trade mark application No 17 593 708 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 17 593 708 ‘VANILLA FASHION FOR PRINT’. The opposition is based on, inter alia, Benelux trade mark registration No 405 701 ‘VANILIA’. 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 marks on which the opposition is based. For reason of procedural economy the Opposition Division finds appropriate to first examine the Proof of Use in relation to the earlier Benelux trade mark registration No 405 701 for the word mark ‘VANILIA’.

The date of priority of the contested application is 15/06/2017. The opponent was therefore required to prove that the subject trade mark was put to genuine use in Benelux from 15/06/2012 to 14/06/2017 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: Clothing, footwear, headgear.

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 30/08/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 04/11/2018, with a further extension until 04/01/2019 to submit evidence of use of the earlier trade mark. On 04/01/2019, 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 the following:

• Exhibit 1: A series of invoices issued within the period 04/02/2013 and 30/10/2018 to customers in various Dutch cities. Most of the provided documents display the trade mark ‘VANILIA’ in a slightly stylized form, namely or on their heading. It is clear from some of the submitted piece of evidence that the nature of the goods sold are clothing since the product decription refers to, inter alia, ‘basic shirt’, ‘stripe pant’, ‘cloud skirt’, ‘trench coat’ or ‘print dress’. The submitted invoices refer to sufficient amounts and items sold.

• Exhibits 2 – 3: A sereis of charts displaying the number of visitors of the opponent’s corporate webiste www.vanilia.com in the period 2014 – 2018. The opponent also provided several screenshots of its website, referring to the years 2013 – 2017. In the provided evidence the trademark ‘VANILIA’ is displayed in relation to clothing.

• Exhibit 4: Printout of several periodicals issued within the years 2013, 2014 and 2016 displaying various collections of clothing in relation to the trademark ‘VANILIA’, for instance: .

• Exhibit 5: Several undated pictures displaying the trademark ‘VANILIA’ in relation to clothing. The opponent also provided pictures posted on Instagram® displaying the trademark ‘VANILIA’ in relation to clothing, referring to 15 December 2017.

• Exhibit 6 – 7: A printout displaying the location of the opponent’s ‘VANILIA’ stores in the Netherlands. Additionally, the opponent provided Instagram® pictures dated on the years 2013, 2014, 2016 and 2017 displaying several ‘VANILIA’ cloth stores. Finally, the opponent provided printouts of the corporate Facebook® and Instagram® pages referring, inter alia, to posts published on 2013 – 2016. The trademark at issue is used in relation to clothes.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Nevertheless, the opponent itself provided the translation of the most relevant parts of the evidence in its further submission of 24/07/2019.

The applicant also contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant also 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.

Assessment of genuine use — factors

Place of use

The evidence must show genuine use of the earlier trade mark within the relevant territory (i.e. Benelux).

The invoices clearly demonstrate that the place of use refers to several Dutch cities. In particular, the addresses in the invoices of the opponent’s sellers are in the Netherlands. Additionally, most of the provided documents are in Dutch. Therefore, the evidence relates to the relevant territory.

Time of use

The evidence must show genuine use of the earlier trade mark within the relevant period.

A considerable part of the invoices are dated within the relevant period, as they were issued between 15/06/2012 to 14/06/2017. Also, the provided articles in periodicals and posts on social networks have been issued within the relevant period.

It follows that the evidence of use submitted by the opponent contains sufficient indications concerning the time of use of the earlier sign.

Extent of use

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 documents submitted, in particular the invoices and the periodical printouts, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In particular, these items of evidence show continuous use of the sign ‘VANILIA’ in the market. In addition, the amounts in the invoices for the goods in question provide sufficient information regarding the continuous use and the commercial volume of the use of the trade mark, referring to sufficient amounts.

It is clear from the evidence that the opponent distributed or provided goods bearing or sold under the ‘VANILIA’ trade mark in the relevant market. The Opposition Division, therefore, has sufficient information regarding the opponent’s commercial activities during the relevant period. In particular, the information contained in the invoices proves that the use of the sign in the Netherlands has been more than mere token use. Consequently, these documents prove the duration and frequency of use of the earlier mark in Benelux.

Nature of use — use as a trade mark

Nature of use requires, inter alia, that the trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

Most of the items of evidence in annexes 4 - 7 show the trade mark in relation to clothing. Therefore, a clear link can be established between the sign ‘VANILIA’ and the goods themselves.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Nature of use — use of the mark as registered

Article 18 and Article 47(2) EUTMR require proof of genuine use in connection with the goods or services for which the trade mark is registered and which the opponent cites as justification for its opposition. Therefore, the opponent must demonstrate that the mark has been used as a trade mark on the market. As the function of a trade mark is, inter alia, to operate as a link between the goods and services and the person or company responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T 105/13, TrinkFix, EU:T:2014:1070, § 28-38). The use of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

A substantial part of the evidence submitted (inter alia, the printouts of the opponent’s corporate website, periodicals, advertisements) clearly refers to the subject trade mark, in either its denominative form or with a slight stylization, such as or . In this regard, it must be stressed that the use of a slightly stylised typescript constitutes an acceptable means of bringing the mark in question to the public’s attention and consequently does not affect the distinctiveness of the earlier mark.

Therefore, the Opposition Division concludes that the mark has been used in accordance with Article 18(1)(a) EUTMR.

Use in relation to the registered goods

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).

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.

According to case-law, when applying the abovementioned provision, the following should be considered:

…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 sub‑categories 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 sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for, inter alia, shirt, pants, skirts, coats or dress, belonging to the following category in the specification: clothing. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for clothing.

The opponent did not submit any evidence regarding any other goods for which the earlier mark is registered. Therefore, the Opposition Division will consider only 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 405 701, in relation to which the proof of use has been assessed an proven.

1. The goods

The goods on which the opposition is based, and for which use has been proven, are the following:

Class 25: Clothing.

The contested goods are the following:

Class 25: Clothing; headwear; footwear; shorts; trousers; polo knit tops; rugby tops; football shirts; T-shirts; shirts; blouses; tops; polo shirts; long sleeved T-shirts; short sleeved T-shirts; T-shirts with graphics printed on them; men's Tshirts; women's T-shirts; ties; suits; waist coats; jackets; overcoats; coats; gloves; mittens; scarves; pullovers; sweatshirts; hooded tops; tracksuits; track suit tops; tank tops; crop tops; jogging tops; sports jumpers; sports jerseys; jumpers; sweaters; cardigans; knitwear being clothing; underclothing; beachwear; clothing for leisure wear; leisure wear; sportswear; exercise wear; ladies wear; ready-to-wear 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.

Clothing is identically contained in both lists of goods.

The contested shorts; trousers; polo knit tops; rugby tops; football shirts; T-shirts; shirts; blouses; tops; polo shirts; long sleeved T-shirts; short sleeved T-shirts; T-shirts with graphics printed on them; men's Tshirts; women's T-shirts; ties; suits; waist coats; jackets; overcoats; coats; gloves; mittens; scarves; pullovers; sweatshirts; hooded tops; tracksuits; track suit tops; tank tops; crop tops; jogging tops; sports jumpers; sports jerseys; jumpers; sweaters; cardigans; knitwear being clothing; underclothing; beachwear; clothing for leisure wear; leisure wear; sportswear; exercise wear; ladies wear; ready-to-wear clothing are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested headwear; footwear are similar to the opponent’s clothing as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

VANILIA	VANILLA FASHION FOR PRINT
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trademarks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The contested sign’s elements ‘FASHION FOR PRINT’ will be perceived by at least part of the relevant public as an English expression conveying the meaning of ‘a style of clothing that can be printed’. The Court has already confirmed that a basic understanding of the English language in, inter alia, the Netherlands is a well-known fact (judgment of 26 November 2008 in Case T 435/07 New Look v OHIM (NEW LOOK), paragraph 23). Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public, which will understand the meaning of these verbal elements given their basic understanding of English.

The degree of distinctiveness conveyed by the elements ‘FASHION FOR PRINT’ is weak in relation to all the relevant goods, since it might allude to the fact that a fashion item can be personalized by means of printing something on it.

Finally, the signs’ respective elements ‘VANILIA’ and ‘VANILLA’ will both refer to a flavouring (i.e. vanilla) and will be perceived with this meaning by the relevant consumers, given the similarity of these elements with the Dutch equivalent word ‘vanille’. These verbal elements are distinctive to a normal degree, since their meaning is not directly related to the relevant goods in a clear way that could impair their distinctiveness.

In the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that 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 (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the letters/sounds ‘VANIL*A’ whereas they differ in their respective sixth letter/sound of this element, ‘I’ in the earlier mark and ‘L’ in the contested application. The signs also differ in the contested trade mark’s additional verbal elements and pronunciation of ‘FASHION FOR PRINT’.

Therefore, and taking into account the above principles and assertions on the degree of distinctiveness of the signs’ elements, these are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the degree of distinctiveness of their elements. As the signs’ respective components ‘VANILIA’ and ‘VANILLA’ convey the same meaning of a flavouring while differ in the contested mark’s expression ‘FASHION FOR PRINT’, they are conceptually similar to an average degree.

As the signs have been found similar in all three aspects 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 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, inter alia, 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, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 have been found partly identical and partly similar. They target the general public that will pay an average degree of attention.

The signs under comparison have been found visually, aurally and conceptually similar to an average degree. Specifically, the contested application’s initial and most distinctive verbal element ‘VANILLA’ shares with the earlier trade mark ‘VANILIA’ six out of seven letters, placed in the same order.

Taking all the above into account, the Opposition Division considers that the assessed differences between the signs are clearly not sufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods, is likely to think that they come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the Dutch-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 Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 405 701. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Marta GARCÍA COLLADO

Aldo BLASI

Victoria DAFAUCE MENÉNDEZ

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.