OPPOSITION No B 3 088 427

We Brand S.à.r.l., 31-33 Avenue Pasteur, 2311 Luxembourg, Luxembourg (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

NXT Brands LLC, 1411 Broadway, 10018 New York, United States of America (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative).

On 08/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 427 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 012 411 for the word mark ‘V+ME’. After a limitation made by the opponent on 28/01/2020, the opposition is based on Benelux trade mark registration No 968 809 for the word mark ‘ME’. 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, namely trousers, shorts, skirts, dresses, jumpers, pullovers, vests, coats, overcoats, waistcoats, blouses and shirts, t-shirts, scarves, ties, mittens, socks, stockings, panty’s, swimming costumes, belts, shoes, namely sandals, boots, shoes, slippers, sports shoes; headgear, namely bobble hats, hats and caps.

The contested goods are the following:

Class 25: Clothing; sweaters; cardigans; jackets; tops; t-shirts; shirts; pants; shorts; outerwear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The contested clothing includes, as a broader category, the opponent’s clothing, namely trousers, shorts, skirts, dresses, jumpers, pullovers, vests, coats, overcoats, waistcoats, blouses and shirts, T-shirts, scarves, ties, mittens, socks, stockings, panty’s, swimming costumes, belts. 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 sweaters; cardigans; jackets; tops; t-shirts; shirts; pants; shorts are identically contained in both lists of goods (including synonyms). Therefore, they are identical.

The contested outerwear includes, as a broader category, the opponent’s clothing, namely trousers, shorts, skirts, dresses, jumpers, pullovers, vests, coats, overcoats, waistcoats, blouses and shirts, T-shirts, scarves, ties, mittens, socks, stockings, panty’s, swimming costumes, belts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 are directed at the public at large. The degree of attention is average.

3. The signs

ME	V+ME
Earlier trade mark	Contested sign

The relevant territory is Benelux: Belgium, Luxembourg and the Netherlands. The official languages are Dutch, French, German.

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 trade marks 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 common element ‘ME’ will be understood in all the relevant Member States, because is a very basic English word, as the personal pronoun meaning ‘myself’ (Collins Dictionary https://www.collinsdictionary.com/dictionary/english) or because it exists as such (in French and Dutch), as the first- person singular personal pronoun for referring to the speaker or writer. Furthermore, it is a commonly used term in the clothing sector and taking into account that the relevant goods are items of personal choice suitable for expressing the personality of the user, it is considered that it has a very high allusive connotation to the relevant goods (30/05/2018, R 1935/2017-4, me & lou MUNICH (fig.) / ME § 26). The additional element ‘+’ of the contested sign will be understood by the relevant public as the internationally used symbol to refer to the word plus or ‘and’, to express addition. Therefore, the distinctiveness of these elements taken into account separately is lower than average.

The public in the relevant territory will perceive the letter ‘V’ of the contested sign as a letter of the Latin alphabet (08/05/2012, T‑101/11, G, EU:T:2012:223, § 56). As the letter ‘V’ does not directly refer or allude to any characteristics of the goods in question, it has an average degree of distinctiveness.

The opponent argued that the ‘ME’ element in ‘V+ME’ in any event has its own distinctive role , applying the Thomson Life decision. It is depicted as a separate element, being one of the verbal elements in the opposed sign. As a result of which, the public is likely to believe that the goods of the Applicant derive from the same source or at least form an economically linked source as those of the opponent, in which case a likelihood of confusion must be held to be established. The Opponent also added that even though something has been placed in front of the earlier mark ME of the Opponent, the signs are still highly similar (B 2 126 301, ME vs UNDER.ME, dated 21/11/2013).

However, the Opposition Division disagrees with these claims. It has to be recalled that, according to the case-law, the fact that one of the components of a composite sign is identical to another sign does not mean that those two signs are similar, unless that component constitutes the dominant element within the overall impression created by the composite sign. That could be the case, in particular, where that component is capable on its own of dominating the image of that sign which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that sign (20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 43; 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 33; 10/12/2008, T-290/07, Metronia, EU:T:2008:562, § 42).

The earlier mark and the contested sign are both word marks, ‘ME’ and ‘V+ME’ respectively. As word marks they have no dominant elements (visually more eye catching than other elements).

Furthermore, the ‘Thomson Life’ judgement referred to by the opponent was intended to prevent the usurpation of word marks consisting of a single term through the addition of a company name. However, the fact that an earlier mark is contained within a mark applied for cannot be considered as a misappropriation of an earlier mark. Only the finding of a likelihood of confusion between them, which presupposes the prior finding of an identity or similarity between the signs, could lead to such conclusion (13/05/2015, T-102/14, TPG POST / DP et al., EU:T:2015:279, § 52).

The present case can be distinguished from the Opposition Division decision B 2 126 301 dated 21/11/2013 referred by the opponent. In that case, the additional English word ‘UNDER’ added at the beginning of the contested sign was considered, at the time, meaningless for the relevant public which made the coinciding components a crucial element in the assessment of likelihood of confusion, which is different from the case at hand.

Visually and aurally, the signs only coincide in the letters/sounds ‘ME’. However, they differ in the additional verbal elements/sounds ‘V+’. The length of the signs influences the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Furthermore, aurally, due to the additional verbal elements ‘V+’ the signs have a completely different rhythm, sequence and sound, despite the fact that the contested sign shares the two letters of which the earlier mark is composed.

Therefore, taking into account all of the above, the marks are visually and aurally similar to, at most, a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘ME’ will be perceived in the earlier mark as one person only. However, in the contested sign it will be perceived as a letter of the Latin alphabet and the symbol ‘+’ (meaning ‘and’ or that there is an addition), and as a consequence (due to the coincidence in the element ‘ME’), the signs are considered only conceptually similar to a low degree, taking into account that the impact of the coinciding element is secondary in relation to the relevant products.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average. The earlier mark should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012 C-196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods, and they target the public at large, whose degree of attention is average. The degree of distinctiveness of the earlier mark is lower than average.

The earlier mark and the contested sign are similar to a low degree insofar as they have the word ‘ME’ in common. Nevertheless, although the opponent’s mark is fully included in the applicant’s sign, the structure of the signs are noticeably different, i.e. the earlier mark is a short word mark composed of only two letters, whereas the contested sign is composed of two verbal elements the letter ‘V’ and the ‘+ symbol’. As explained in detail in section c), these differences between the signs clearly lead to quite distant overall impressions from the visual, aural and even conceptual point of view.

In relation to the goods in question, it is worth mentioning that generally, customers can themselves either choose the item they wish to buy or be assisted by the sales staff and the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T 117/03 - T 119/03 & T 171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable differences between the signs caused by the additional different verbal elements placed at the beginning of the contested sign where consumers pay more attention are particularly relevant when assessing the likelihood of confusion between them.

In the light of all the above and taking into account all the other relevant circumstances of the case, the Opposition Division considers that the fact that the signs at issue coincide in two letters does not itself lead to a finding of likelihood of confusion. It is unlikely that the relevant public would dissect the element ‘ME’ from the contested sign, but would rather perceive this sign as a whole without analysing its various details. In the present case the signs differ sufficiently to exclude any likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

For the sake of completeness, it has to be mentioned the opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is no likelihood of confusion on the part of the public, even considering that the goods are identical. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the holder are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aurelia PÉREZ BARBER

Maria Clara IBAÑEZ FIORILLO

Andrea VALISA

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.