OPPOSITION No B 3 073 023

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

Shenzhenshiweigu E-Commerce Co. Ltd, Room 301321, 4th Hongmian Road Longgang District, 518000 Shenzhen, People’s Republic of China (applicant), represented by Ardeshir Matini, Lower Ground Floor 26 Finsbury Square, London EC2A 1DS, United Kingdom (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 023 is upheld for all the contested goods.

2. European Union trade mark application No 17 979 923 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 17 979 923 for the word mark ‘VGA’, namely against all the goods in Classes 7 and 8. The opposition is based on European Union trade mark registration No 14 843 122 for the figurative mark and international trade mark registration No 694 044 designating the European Union for the word mark ‘VEGA’. 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.

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 international trade mark registration No 694 044.

a) The goods

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

Class 7: Vacuum cleaners; electric shoe polishers; electrical appliances for household use.

Class 8: Cutlery, forks and spoons, including of precious metals; razors.

The contested goods are the following:

Class 7: Kitchen machines, electric; mxing machines; mixers [machines]; whisks, electric, for household purposes; fruit presses, electric, for household purposes; coffee grinders, other than hand-operated; machines and apparatus for carpet shampooing, electric; central vacuum cleaning installations; dust exhausting installations for cleaning purposes; vacuum cleaners.

Class 8: Vegetable knives; vegetable shredders; vegetable slicers; cleavers; paring knives; vegetable choppers; choppers [knives]; fleshing knives [hand tools]; mincing knives [hand tools]; ceramic knives; tableware [knives, forks and spoons].

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 7

All the contested goods are identical to the opponent’s goods, either because they are identically contained in both lists (vacuum cleaners) or because the opponent’s electrical appliances for household use include or overlap with, the remaining contested goods in this class.

Contested goods in Class 8

The opponent’s cutlery, including of precious metals includes knives, forks, and spoons made of various materials which are used for eating or serving food. These goods include or are synonymous with the contested tableware [knives, forks and spoons]. Therefore, they are identical. Moreover, the opponent’s cutlery is at least highly similar to the remaining goods in this class, namely vegetable knives; vegetable shredders; vegetable slicers; cleavers; paring knives; vegetable choppers; choppers [knives]; fleshing knives [hand tools]; mincing knives [hand tools]; ceramic knives. The nature of these contested goods is the same as the opponent’s goods (which include knives). These goods target the same public, are found in the same outlets and are usually made by the same producers.

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 highly similar are directed at the public at large or at professionals in gastronomy.

The degree of attention is average.

c) The signs

VEGA	VGA
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 word ‘VEGA’, present in the earlier mark, may be perceived by part of the public as the name of the brightest star in the constellation of Lyra (‘VEGA’ is identified with that astronomical meaning in most European languages). Some consumers could also associate ‘VEGA’ with a surname (some people will be familiar with the name Lope de Vega or Suzanne Vega) or a female given name. Moreover, for Spanish-speaking consumers, this verbal element might bring to mind a fertile land (usually bordering the lower valley of rivers and streams, in the southern provinces of Spain). However, the verbal element ‘VEGA’ does not refer to any characteristics of the relevant goods. Therefore, it is distinctive. This also applies to the part of the public that might not have any associations with this verbal element.

The contested mark has no meaning and is therefore also distinctive.

Visually, the signs coincide in the sequence of letters ‘V(*)GA’ . However, they differ in the additional second letter ‘E’ in the earlier mark.

Therefore, as the contested sign consists of three out of four letters forming the earlier mark, which are, moreover, placed in the same order in both signs, the signs must be considered similar to an average degree.

Aurally, if the contested sign is pronounced letter by letter, the signs under comparison are similar to a very low degree or even dissimilar (e.g. for the Polish-speaking public).

Nevertheless, it cannot be excluded that part of the public, for example, at least some of the Spanish-speaking consumers, will not read the contested sign letter by letter, but rather will pronounce the sign as a whole. In such a case, the pronunciation of the contested sign might be highly similar to the earlier mark ‘VEGA’.

Conceptually, for the part of the public that will not associate either sign with any meaning, a conceptual comparison is not possible. Therefore, for this part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for the part of the public that perceives the meaning of the earlier mark, as explained above, the signs are not conceptually similar. This is because the other sign has no meaning.

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.

e) 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.

The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). Moreover, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. 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).

The goods are partly identical and partly highly similar. The degree of attention paid by the relevant public is average. The marks are visually similar to an average degree. Aurally the assessment of the similarity of the signs can change from dissimilar to highly similar, depending on the pronunciation of the contested sign. Conceptually, either the signs are not similar or the comparison is not possible, depending on whether or not the relevant public has any semantic associations with the earlier mark.

As explained above, the signs coincide in the sequence of letters ‘V*GA’. They differ in the additional letter ‘E’ of the earlier sign. However, considering that the marks are often not compared side by side, the impression given by the contested sign is similar to the one given by the earlier mark. Therefore, the abovementioned difference in the letter ‘E’ is not sufficient to outweigh the overall similarity between the marks.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 694 044 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned 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, 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

Renata COTTRELL

Marta Maria CHYLIŃSKA

Astrid Victoria WÄBER

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.