DECISION

of the First Board of Appeal

of 7 June 2021

In case R 1750/2020-1

WE Brand S.à.r.l.
31-33 Avenue Pasteur L-2311 Luxembourg Luxembourg	Opponent / Appellant

represented by NAUTA DUTILH N.V., Beethovenstraat 400, 1082 PR Amsterdam, Netherlands

v

NXT Brands LLC
1411 Broadway 10018 New York United States of America	Applicant / Defendant

represented by WITHERS & ROGERS LLP, Kaulbachstr. 114, 80802 Munich, Germany

APPEAL relating to Opposition Proceedings No B 3 088 427 (European Union trade mark application No 18 012 411)

The First Board of Appeal

composed of G. Humphreys (Chairperson), M. Bra (Rapporteur) and A. Kralik (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 18 January 2019, NXT Brands LLC (‘the applicant’) sought to register the word mark

V + ME

for the following list of goods as modified on 5 April 2019:

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

2. The application was published on 9 April 2019.

3. On 8 July 2019, WE Brand S.à.r.l. (‘the opponent’) filed an opposition against the registration of the contested trade mark application for all the above goods.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. After a limitation made by the opponent, the opposition was based on the following earlier right:

1. Benelux national trade mark registration No 968 809 filed on 16 January 2015 and registered on 30 March 2015 for, inter alia:

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.

6. By decision of 8 July 2020 (‘the contested decision’), the Opposition Division rejected the opposition for all the contested goods on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

The goods

• 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 Office 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 Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Relevant public — degree of attention

• The goods found to be identical are directed at the public at large. Their degree of attention is average.

The signs

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

• It is noted that the unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories.

• The common element ‘ME’ will be understood in all the relevant Member States, because is a very basic English word, as the first-person singular 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 for the relevant goods. 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. 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 the contested sign has, in any event, its own distinctive role, in light of the ‘Thomson Life’ decision (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594). It is depicted as a separate element, being one of the verbal elements in the opposed sign. As a result of this, the public is likely to believe that the applicant’s goods derive from the same source or at least from an economically-linked source as those of the opponent, in which case a likelihood of confusion must be held to have been established. The opponent also added that even though something had been placed in front of the earlier mark ‘ME’, the signs are still highly similar (see, in this sense, the decision of the Opposition Division, 21/11/2013, B 2 126 301, ME / UNDER.ME).

• 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.

• The earlier mark and the contested sign are both word marks, ‘ME’ and ‘V+ME’, respectively. As word marks they have no dominant elements.

• The present case can be distinguished from the Opposition Division’s decision referred to by the opponent (21/11/2013, B 2 126 301, ME / UNDER.ME). 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 a 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 lengths of the signs influence 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, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

• 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.

Distinctiveness of the earlier mark

• 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, the distinctiveness of the earlier mark must be seen as being 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 has made it clear that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’.

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 structures 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. Therefore, these differences between the signs clearly lead to quite distant overall impressions from the visual, aural and even conceptual points of view.

• In relation to the goods in question, it is worth mentioning that generally, customers can either choose the item they wish to buy themselves 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. 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 light of all the above and taking into account all the other relevant circumstances of the case, the fact that the signs at issue coincide in two letters does not itself lead to a finding of a likelihood of confusion. It is unlikely that the relevant public would dissect the element ‘ME’ from the contested sign. It 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 that 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. 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.

7. On 25 August 2020, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 8 November 2020.

8. In its response received on 9 December 2020, the applicant only informed the Office that it did not wish to file further observations in response to the opponent’s statement.

Submissions and arguments of the parties

9. The arguments raised in the statement of grounds may be summarised as follows:

Distinctiveness of the earlier mark

• The earlier trade mark as a whole has no meaning in relation to the goods at hand in Class 25 from the perspective of the public in the Benelux. Therefore, its degree of distinctiveness per se must be seen as normal.

• Looking at the elements composing the sign, the element ‘ME’ is not descriptive (nor allusive) for instance for clothing, therefore the sign is absolutely capable of distinguishing goods and services and has a normal degree of distinctiveness.

• As for the public that understands English or speaks Dutch or French, the relevant public will understand the earlier mark as the first-person singular personal pronoun (either in Dutch, French or English), which is used by a speaker to refer to himself or herself as the object of a verb or preposition. Clearly, the relevant goods do not relate to the speaker itself, but instead to various articles of clothing and footwear. A ‘ME’ is not a piece of clothing, shoes or a headgear product. To the extent that the word ‘ME’ may somehow allude to items of the personality of the owner, which is not the case, this is insufficient to render the mark weak for items which are clearly not only for ‘ME’. As for the part of the public who does not speak Dutch, French or understands English, the earlier mark is in any event not descriptive or allusive. This part of the public would not be able to grasp its meaning.

• The Opposition Division’s argument that ‘ME’ will express the personality of the user does not change this conclusion. The mere fact that there might be an allusion to characteristics of the goods does not automatically result in its lower degree of distinctiveness.

• In addition, the mere existence of other parties’ trade marks containing or consisting of the word ‘ME’ does not affect the above conclusion in respect of the average degree of distinctive character. In particular, it does not reflect the actual market situation.

• Likewise, it is not been proven that consumers have been exposed to widespread use of, and become accustomed to, trade marks that include ‘ME’ in order to prove that the element in question has a low degree of distinctive character. In fact, it is quite the contrary: even for identical or similar goods the fact that some applications have been accepted for this element can also show that the word was deemed prima facie distinctive for the goods and services applied for rather than the contrary.

The signs

• Visually, the signs are similar to at least an average degree overall. The contested sign is a word mark, consisting of the verbal elements ‘V’ and ‘ME’, linked by means of a plus symbol ‘+’. The word element ‘V’ is a one-letter element and thus of a shorter length than the ‘ME’ component. Also, the ‘V’ element is one of the less striking letters of the Latin alphabet. Furthermore, it has been acknowledged by the Court of Justice that, in the case of trade marks consisting of single letters represented in standard characters with no graphic modifications, although potentially capable of serving as a distinctive sign, it may be more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks. Therefore the ‘ME’ element contributes in being a major part regarding the overall impression of the earlier sign as a whole. The ‘+’ symbol is basic and its use is commonplace and therefore does not attract the attention of the consumers in the presence of a word element. Although the ‘+’ in the contested sign may go unnoticed, it merely serves to divide the mark automatically into two parts in the minds of consumers, thus stressing the independent role of the second word element placed after the ‘+’ symbol. The trade marks under comparison are similar to the extent that they both comprise the word ‘ME’, which is the only element of the earlier mark and which is clearly visible. The fact that ‘ME’ constitutes the only element of the earlier mark and is entirely contained in the contested sign, is, in line with established case-law, an indication that the two signs are similar. Any differences between the signs (i.e. the element ‘V’ and the ‘+’ symbol) do not outweigh the similarities between them, since the earlier mark is completely included in the contested sign. After all, even though the contested sign contains additional elements, these elements do not make the contested sign way longer than the earlier mark or dominate the contested sign.

• Phonetically, the signs under comparison are similar to an average degree. The pronunciation of the signs, irrespective of the different pronunciation rules in different parts of the Benelux, coincides in the sound of the word ‘ME’ present identically in both signs. The relevant public is aware that both signs will be used in the English language version. The word element ‘ME’ will certainly be understood in English and, given the nationality of the applicant (United States of America), it is also intended that it has its English meaning so that the letter ‘V’ will also be pronounced in the English manner, which means that the element ‘V’ has the same sound as the element ‘ME’. The earlier mark is, from a phonetic point of view, a repetition in sound of the ‘V’ element, meaning that ‘ME’ rhymes with ‘V’. The phonetic differences between the signs are not sufficient to outweigh such a conclusion.

• From a conceptual point of view, the signs are similar to at least an average degree. The word ‘ME’, which is present in both sings, refers in English to the first-person singular personal pronoun used to refer to himself or herself. The public in the Benelux is familiar with English and will understand the meaning of this word, which is a basic English word and which is part of an everyday vocabulary. Within this concept, the meaning of ‘ME’ is identical. For the Benelux public, especially the part that understands English and the Dutch-speaking part (due to the equivalent ‘ME’ and MIJ in Dutch) the signs at issue are conceptually similar to an average degree to the extent that they include the word ‘ME’.

Global assessment

• There is a likelihood of confusion, since the goods at hand are identical; the marks are visually, aurally and conceptually similar to an average degree; the word element ‘ME’ in the contested sign is equally, or even more, dominant than the ‘V’ and more dominant than any other element of the contested sign and thus clearly stands out; the earlier mark has an average degree of inherent distinctiveness and the relevant public involved is the public at large with a normal degree of attention.

• The assessment of the visual similarity is first and foremost relevant in the present case, because of the nature of the goods.

• With this in mind, consumers may believe that there is a link between the undertakings or indeed that the marks relate to different lines of goods, especially when taking into account that it is common in the clothing sector for a brand to sometimes be combined with another brand, as a result of temporary cooperation and/or marketing effort (co-branding).

• In addition, it is noted that within the fashion industry there are many fashion brands that use an ‘+’ between two names as a trade mark.

• Considering all the above, the relevant public is likely to believe that the marks under comparison, when applied to identical goods, are related trade marks having the same commercial origin, that the contested sign is a sub-brand of the earlier mark and/or there is a link between them. Therefore, there is a likelihood of confusion on part of the public.

Reasons

10. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

11. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

The documents filed before the Board

12. Article 95(2) EUTMR provides that the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. This provision was interpreted by the Court of Justice in the sense that ‘…as a general rule and unless otherwise specified the submission of facts and evidence by the parties remains possible after the expiry of the time-limits’. The Court ruled that the parties do not have an unconditional right that belated evidence will be accepted. This provision rather grants the Office a ‘wide discretion’ to decide, while giving reasons for its decision in that regard, whether or not to take into account facts and evidence which, as in the present case, were submitted out of time (03/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 43; 28/02/2018, C-418/16 P, mobile.de, EU:C:2018:128, § 49). The Court further indicated that taking such facts or evidence into account is particularly likely to be justified where the Office considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the declaration of invalidity or opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (03/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 44).

13. As the Court has held, it results from the wording of Article 95(2) EUTMR that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of the EUTMR and that the EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (13/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 42; 18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 22), that is after the time-limit provided by the Regulation and, as the case may be, for the first time before the Board of Appeal.

14. In stating that the latter ‘may’, in such a case, decide to disregard evidence, Article 95(2) EUTMR grants the Office broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (13/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 43; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 23).

15. According to Article 27(4) EUTMDR, the Board may accept facts or evidence submitted for the first time before it only where those facts and evidence meet two requirements. Firstly, it must be established that they are prima facie relevant for the outcome of the case. Secondly, it must be established that these facts and arguments have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest the findings made or examined by the first instance of its own motion in the decision subject to appeal.

16. In the present case, the additional documents filed by the opponent consists of:

1. Exhibit 1: Copy of the contested decision;

2. Exhibit 2: Printouts of WE Group’s international websites of the opponent along with a list of WE Group’s retail stores;

3. Exhibit 3: Copies of the homepages of various local national websites of the opponent ‘www.wefashion.de (Germany); www.wefashion.fr (France); www.wefashion.nl (the Netherlands); www.wefashion.de (Belgium); www.wefashion.at (Austria); www.wefashion.lu (Luxembourg);

4. Exhibit 4: Screenshots regarding websites of retailers offering for sale products of the WE Group;

5. Exhibit 5: List of registered trade marks of the WE Group worldwide.

17. In the Board’s view, the requirements set out in Article 27(4) EUTMDR have not been fulfilled. The additional documents provided by the opponent are not, in fact, prima facie relevant for the outcome of the case, nor do they supplement or corroborate relevant facts and arguments which had already been submitted in due time. In particular, the copy of the contested decision (Exhibit 1) is part of the file of the present proceedings per se, whereas Exhibits 2-4 only provide information regarding the opponent’s background, for instance data regarding the company and the list of its retail stores, which are irrelevant for the assessment under Article 8(1)(b) EUTMR. Equally, the fact that the opponent is the owner of several trade marks worldwide (Exhibit 5) does not affect said evaluation.

18. It must be concluded that the new documents filed for the first time before the Board cannot be admitted.

Article 8(1)(b) EUTMR

19. In accordance with Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its similarity to the earlier trade mark and the identity or similarity of the goods covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

20. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that Article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30). It is clear from that provision that a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods covered by the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative (12/10/2004, C-106/03, Hubert, EU:C:2004:611, § 51).

21. A likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Comparison of the goods

22. The contested decision’s finding that all the contested goods in Class 25 are identically included or overlap with the categories covered by the earlier mark in the same class, is not in dispute between the parties. The Board endorses this undisputed finding.

Relevant public and territory

23. As correctly pointed out in the contested decision, the goods at hand are directed at the public at large, displaying an average degree of attention.

24. Since the earlier mark is a Benelux national trade mark, the relevant territory is that of Benelux: Belgium, Luxembourg and the Netherlands. The official languages are French, German and Dutch.

Comparison of the marks

25. The comparison between the signs in conflict in relation to the visual, aural or conceptual similarities between the marks in question has to take into account the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28). The comparison must be based on the perception, pronunciation and meaning of the signs in conflict in the territory where the earlier mark is protected.

26. Regarding the comparison between the marks, it should be recalled that, according to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30; 18/10/2007, T‑28/05, Omega 3, EU:T:2007:312, § 54).

27. The signs to be compared are:

    ME	V + ME
    Earlier mark	Contested sign

28. The earlier right is a word mark consisting of the word ‘ME’. The term ‘ME’ is a basic English word that will be perceived by the relevant English-speaking, French and Dutch parts of public as the first-person singular personal pronoun meaning ‘myself’. Therefore, it has a meaning for at least part of the relevant public. For the remaining part of the public, the term ‘ME’ does not have any meaning. The Board will focus its assessment on the part of the public for which the term ‘ME’ does not bear any meaning, thus it does not refer or allude to any characteristics of the goods at hand and consequently it has an average degree of distinctiveness.

29. The contested sign is also a word mark consisting of the elements ‘V’, ‘+’ and the term ‘ME’. The letter ‘V’ would be perceived by the relevant public as a letter of the Latin alphabet (08/05/2012, T-101/11, G, EU:T:2012:223, § 56). As it does not directly refer or allude to any characteristics of the goods at issue, it has an average degree of distinctiveness. The element ‘+’ between the letter ‘V’ and the term ‘ME’ will not go unnoticed by the relevant public and will be perceived as the internationally used symbol to refer to the word ‘plus’ or ‘and’, to express addition. The distinctiveness of the element ‘+’ is therefore lower than average. As for the meaning and distinctive character of the element ‘ME’, the same considerations as for the earlier sign apply. Furthermore, it is noted that ‘ME’ will be perceived in the contested sign as a separate element with its own distinctive role.

30. The earlier mark consists of a single word element. Neither of the constituent elements of the contested sign dominates the overall impression. Therefore, none of the signs has any component which would be seen as dominant.

31. That being said, visually, the signs coincide in the word element ‘ME’, which is the only component of the earlier mark and an element of the contested sign. On the other hand, they differ in the additional element ‘V’, present at the beginning of the contested sign and in the following symbol ‘+’. As seen above, the element ‘ME’ will be perceived in the contested sign by the relevant public as a separate element with its own distinctive role. Despite their differences in lengths, the signs at issue display a visual similarity as a result of the common word ‘ME’. The fact that ‘ME’ constitutes the only element of the earlier mark and is entirely contained in the contested sign, is an indication that the two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26). Although the additional elements ‘V’ and ‘+’ will not go entirely unnoticed by the relevant public, the signs are visually similar to an average degree.

32. Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ME’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation only differs in the sound of the letter ‘V’ and of the symbol ‘+’ of the contested mark, which have no counterparts in the earlier sign. However, the contested sign fully reproduces the only word element in the earlier mark, which is identical and is pronounced in the same way. Therefore, the Board considers that the signs are aurally similar to an average degree, notwithstanding the additional elements ‘V’ and ‘+’ of the contested sign.

33. Conceptually, as stated above, the present assessment has been focused on the part of the public that perceives no meaning in the common element ‘ME’. As far as the letter ‘V’ in the contested sign is concerned, such letter has no further concept in relation to the goods at issue besides the fact of being a letter of the Latin alphabet. Such generic concept however has no relevant impact in the conceptual assessment at issue and is not sufficient per se to establish a conceptual dissimilarity (see, by analogy, 26/03/2021, R 551/2018-G, Device (fig.) / Device (fig.) § 78-79). Finally, the symbol ‘+’ introduces the concept of ‘plus’ or ‘and’. However, assessed as a whole, neither of the signs has a specific meaning. In view of the above, the conceptual comparison is not possible and remains neutral.

34. In light of the considerations above, globally, the signs are visually and aurally similar to an average degree, whereas the conceptual comparison remains neutral.

Distinctiveness of the earlier mark

35. The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use of reputation. Therefore, as correctly mentioned in the contested decision, the assessment of the distinctiveness of the earlier sign will rest on its distinctiveness per se.

36. Account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered, as well as how intensive, geographically widespread and long-standing use of the mark has been (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22, 23). In principle, the distinctive character of a sign has to be examined, firstly, with reference to the goods or services for which it is registered and, secondly, with reference to perception of the sign by the public. Consequently, the appreciation of the distinctive character of the earlier trade mark will be based on its intrinsic distinctive character.

37. The opponent pointed out that the contested decision wrongly held that the distinctiveness of the earlier mark must be seen lower than average. In this regard, the Board notes that the part of the public under focus will not attach any meaning to the word ‘ME’. Therefore, for these consumers it is distinctive for the goods at issue.

38. Therefore, as pointed out by the opponent, the Board finds that the earlier sign has an average degree of distinctiveness.

Global assessment

39. The assessment of the 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, Sabèl, EU:C:1997:528, § 22).

40. Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, §20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

41. In the case at hand, the opponent has not disputed the findings of the contested decision concerning the identity between the goods. Equally, it is undisputed that the contested goods are directed at the public at large. Moreover, the degree of attention of the relevant public while purchasing the goods concerned is considered to be average. For the part of the public under focus for the purpose of the present assessment, the earlier sign enjoys an average degree of distinctive character.

42. The earlier mark is entirely contained in the contested sign, which is an indication that the two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T 260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T 179/11, Seven Summits, EU:T:2012:254, § 26 and case-law cited therein). Furthermore, the common element ‘ME’ is the only element of the earlier mark.

43. Globally, the signs are visually and aurally similar to an average degree based on the word ‘ME’ which forms the sole element of the earlier mark and is reproduced in the contested sign. The conceptual comparison is not possible and remains neutral.

44. Even if the additional elements ‘V’ and ‘+’ in the contested sign were not to go entirely unnoticed by the relevant public, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T‑286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T-169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102; 08/03/2005, T‑32/03, Jello Schuhpark, EU:T:2005:82; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T-104/01, Fifties, EU:T:2002:262; 04/05/2005, T‑22/04, Westlife, EU:T:2005:160), and this element that the marks have in common retains an independent distinctive role in the other composite mark (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30).

45. In the present case, it is of particular relevance that the common element of the marks, the term ‘ME’, which is the only element of the earlier mark, is entirely included in the contested sign and will be retained by the public as an independent component. In this sense, the presence in the contested sign of the letter ‘V’ and a ‘+’, will still allow the relevant public to recognise the presence of the element ‘ME’ and thus the latter elements are unable to outweigh the abovementioned similarities.

46. Furthermore, given that the relevant public will retain the word element ‘ME’ of the earlier trade mark in their minds, when they find goods of the same type covered by the contested mark, on which they will clearly identify the common element ‘ME’, as pointed out by the opponent, they are likely to think that these goods have the same trade origin. It is highly possible that an undertaking that is active in the marketing of the goods in question uses secondary trade marks, that is to say signs that derive from a principal mark and that share a common element with the latter, in order to distinguish the scope of one product from another. This is even more true in light of the sector at issue, namely that of fashion. Moreover, as pointed out by the opponent, the relevant public could think that the contested sign reflects co-branding with the opponent, especially considering the element ‘+’ of the contested sign. It is therefore likely that consumers would believe that the goods in question come from the same undertaking or, at the very least, from economically-linked undertakings when seeing identical goods bearing the conflicting signs. It cannot be ruled out that the relevant consumers will perceive the contested trade mark as a variant or subtrade mark of the earlier sign for a specific line of goods, or the result of a co-branding initiative involving the opponent’s sign.

47. In addition, the goods falling within Class 25 are sold through the usual distribution channels for clothes, footwear and headgear, namely shops. The relevant public will therefore evaluate them visually. Moreover, while oral communications concerning the goods and the mark cannot be excluded, the choice of an item of clothing, a pair of shoes or headgear is generally made by looking at them. Therefore, the visual perception of the marks in question will generally occur prior to purchase. The visual aspect is, for that reason, of greater importance in the overall assessment of the likelihood of confusion (18/05/2011, T-502/07, McKenzie, EU:T:2011:223, § 50; 14/10/2003, T-292/01, Bass, EU:T:2003:264, § 55; 06/10/2004, T-117/03- T-119/03 & T-171/03, NL, EU:T:2004:293, § 50; 24/01/2012, T-593/10, B, EU:T:2012:25, § 47).

48. In light of the foregoing considerations and taking into account the notion of imperfect recollection, the interdependence of the various factors and the normal degree of inherent distinctive character of the earlier mark, it must be held that there exists a likelihood of confusion with respect to the identical goods at issue within the meaning of Article 8(1)(b) EUTMR for at least a relevant part of the public.

Conclusion

49. Bearing in mind all of the foregoing, the appeal is successful and the contested decision must be annulled.

Costs

50. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the opposition and appeal proceedings.

51. As to the appeal proceedings, these consist of the appeal fee of EUR 720 and the opponent’s costs of professional representation of EUR 550.

52. As to the opposition proceedings, the applicant must reimburse the opposition fee of EUR 320 and the opponent’s cost of professional representation of EUR 300. The total amount is fixed at EUR 1 890.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Rejects the application in its entirety;

3. Orders the applicant to bear the opponent’s costs incurred in the appeal and opposition proceedings in the amount of EUR 1 890.

Signed G. Humphreys

Signed M. Bra

Signed A. Kralik

Registrar: Signed H.Dijkema