OPPOSITION Nо B 3 093 775

 

Vans, Inc., 1588 South Coast Drive, Costa Mesa, CA 92626, United States of America (opponent), represented by SKW Schwarz Rechtsanwälte, Mörfelder Landstr. 117, 60598 Frankfurt am Main, Germany (professional representative) 

 

a g a i n s t

 

Paredes Holding Center, S.L., Sor Josefa Alcorta, 37, 03204 Elche (Alicante), Spain (applicant), represented by Demarks & Law, Cirilo Amorós 57, 46004 Valencia, Spain (professional representative).

On 20/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 093 775 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 040 517 (figurative mark). The opposition is based on European Union trade mark registration No 10 263 895, (figurative mark), and European Union trade mark registration No 10 345 403, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

 

European Union trade mark registration No 10 263 895 (earlier mark 1)

Class 25: Clothing, footwear, headgear; belts: gloves.

European Union trade mark registration No 10 345 403 (earlier mark 2)

Class 18: Leather and imitations of leather, and goods made of these materials; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Whips, harness and saddlery; wallets; bags; rucksacks; belt bags; briefcases; (school)bags for school; (school)bags for sport; beach bags; key rings; card holders; hip bags.

Class 25: Clothing, footwear, headgear, belts, gloves.

The contested goods and services are the following:

 

Class 3: Non-medicated cosmetics and toiletry preparations; Non-medicated dentifrices; Perfumery, essential oils; Bleaching preparations and other substances for laundry use; Soaps; Essential oils; Hair lotions, dentifrices; Deodorants for personal use and in particular, polishes and creams for cleaning and treating leather, perfumery and cosmetics; Scouring substances; Polishing preparations; Abraders; Cleaning preparations.

Class 9: Mechanisms for coin-operated apparatus; Computers and computer peripherals; Diving suits, Divers' masks, Ear plugs for divers, Nose clips for divers and swimmers, Gloves for divers, Breathing apparatus for underwater swimming; Fire-extinguishing apparatus; Safety and protective shoes and gloves for work; Sunglasses, diving goggles, swimming goggles, scuba goggles, work goggles, spectacle frames, spectacle cases, optical accessories and items for people's eyesight; Photographic apparatus and instruments; Cinematographic machines and apparatus; Optical apparatus and instruments; Weighing apparatus and instruments; Nautical apparatus and instruments; Surveying apparatus and instruments; Measuring apparatus and instruments; Checking (supervision) apparatus and instruments; Signalling apparatus and instruments; Life-saving apparatus and instruments; Scientific apparatus and instruments; Teaching apparatus and instruments; Apparatus and instruments for controlling electricity; Apparatus and instruments for accumulating electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for transforming electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for conducting electricity; Sound transmitting apparatus; Apparatus for the transmission of images; Apparatus for the reproduction of images; Sound reproduction apparatus; Apparatus for recording images; Sound recording apparatus; Magnetic data carriers, recording discs; Cash registers; Calculators; Computers; Data processing equipment.

Class 10: Orthopedic articles; Suture materials; Therapeutic and assistance devices for disabled people; Massage apparatus; Apparatus, devices and articles for childcare; Sexual activity apparatus, devices and articles; Orthotic footwear; Veterinary apparatus and instruments; Surgical apparatus and instruments; Dental apparatus and instruments; Medical apparatus and instruments; Artificial limbs; Artificial teeth; Artificial eyes.

Class 14: Precious metals and their alloys; Trophies, statues, works of art of precious metals and their alloys; Jewelry; Paste jewellery [costume jewelry (Am.)]; Semi-precious stones; Precious stones; Chronometric instruments; Time instruments.

Class 16: Paper and cardboard; Printed matter; Bookbinding material; Photographs; Adhesives for stationery or household purposes; Paint brushes; Paper sheets; Plastic films and bags for wrapping and packaging; Printers' type; Printing blocks; Printed publications (periodicals, magazines or books); Adhesives for stationery and household purposes; Typewriters; Magazines and publications in relation to the footwear and fashion sector; Stationery; Artists' materials; Teaching materials [except apparatus].

Class 18: Leather and imitation leather; Animal skins, hides; Umbrellas and parasols; Walking sticks; Collars, leads and clothing for animals; Goods of leather, namely handbags, Casual bags, Portfolio bags, Shoulder belts, Backpacks, Carrying cases, Purses, Suitcases; bags of skin or hide; Trunks and travelling bags; Rucksacks, waist packs, briefcases and pocket wallets; All-purpose athletic bags; Briefcases [leather goods]; Briefbags; Luggage tags [leatherware]; Travelling sets [leatherware]; Travel cases; Saddlery; Whips; Harnesses.

Class 25: Clothing, footwear including boots, shoes and slippers; Headgear; Swimming costumes; Waist belts; Non-slipping devices for footwear; Clothing; Headgear; Footwear.

Class 28: Video game apparatus; Decorations for Christmas trees; Sporting articles and equipment; Playthings and trinkets; Fairground and playground apparatus; Party decoration articles; Games; Gymnastic and sporting articles.

Class 35: Advertising; Business management; Business administration; Office functions; Advertising and marketing of footwear, safety footwear and gloves, ready-made clothing, fashion articles sporting articles, accessories, eyeglasses and optical goods, perfumery and cosmetics, clocks and watches, sports footwear, work shoes, inner soles for boots and shoes, non-slipping devices for footwear, protective and safety socks; Commercial or industrial management assistance; Export, import and commercial agencies relating to footwear, safety footwear and gloves, ready-made clothing, fashion and sporting articles, and accessories; Wholesaling and retailing in shops and retailing via global computer networks of footwear, safety footwear and gloves, ready-made clothing, fashion articles and sportswear, accessories, eyeglasses and optical goods, perfumery and cosmetics, clocks and watches, boots for sports, work footwear, insoles for boots and shoes, non-slipping devices for footwear, protective and safety socks; franchising relating to business management assistance.

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

 

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

 

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

 

(earlier mark 1) and (earlier mark 2)
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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

 

Both of the earlier signs are figurative marks. Earlier mark 1 consists of the representation of a shoe depicted in black dotted lines shown in an inclined position. Furthermore, the representation of the shoe contains a graphical element consisting of two black outer-lines which are changing its position several times. Each of the two lines consist of three segments whereas the third one is longer than the previous two. In the view of the Opposition Division it is unlikely that the relevant public will recognise the letter ‘V’ in said graphical element, but will rather perceive such element as being two abstract lines with changing directions. In this regard reference is made to the Judgement of the General Court of 06/12/2018, Deichmann v EUIPO – Vans, T-638/16, ECLI:EU:T:2018:883, §§ 65 and 68 in which the Court confirmed the above mentioned position. To the extent that the earlier mark 1 shows the representation of a shoe and considering the fact that some of the relevant goods are relating to footwear, such element is of weak distinctive character, if any at all. The remaining graphical element, however, has no particular meaning with regard to all of the relevant goods and services and is therefore of normal distinctiveness.

Earlier mark 2 consists of a V-shaped graphical representation being depicted in an upright position consisting of three bold and black coloured beams of fairly the same lengths. Earlier mark 2 has no particular meaning with regard to the relevant goods and is therefore of normal distinctive character, too.

The contested sign is a figurative mark which consists of three bold and black coloured beams of different lengths, following different directions. The two beams from the bottom to the top are connected with a curve, whereas beam 2 and 3 are connected with sharp corners. Contrary to the views of the opponent and the applicant the Opposition Division considers it unlikely that the relevant public will actually see the letter ‘V’ or ‘S’ when perceiving the contested sign, but rather an abstract graphical element. Just like the earlier mark 2, the contested sign has no particular meaning with regard to the relevant goods and services and is therefore of normal distinctive character.

Neither of the marks under analysis has elements that could be considered clearly more dominant than other elements. 

Visually, earlier mark 1 and the contested sign only coincide to the extent that both contain or consist of a graphical element comprising of three elements of changing directions, which in the view of the Office are rather irrelevant aspects. The signs differ on account of the representation of a shoe in earlier mark 1, the fact that the graphical element within the shoe is depicted in two slim lines, it’s colour, different lengths and directions in contrast to the contested sign which consists of three bold beams of different lengths in black colour which are furthermore connected in the bottom part with a curve rather than with edges. Taking into account that there is no visual overlap between earlier mark 1 and the contested sign the Opposition Division is of the opinion that they are visually not similar.

Earlier mark 2 and the contested sign coincide on account of the fact that they both consist of three bold and black coloured beams with changing directions. The signs differ in the actual position and directions of the several beams, the fact that earlier mark consists of beams being of the same lengths, whereas the contested sign consists of beams of different lengths. Furthermore, the beams of the contested sign are connected in its bottom part with a curve whereas the bottom part of earlier mark 2 is connected with edges. Taking into account the above considerations, the Opposition Division considers earlier mark 2 and the contested sign to be visually not similar either.

To the extent that the opponent claims that the contested mark is similar to the earlier marks when turned to a different angle the Opposition Division notes that the comparison of the signs has to be carried out on the basis of the signs as actual registered and not based on its potential use or possible different angles (unless the requirement to proof use is involved, which is not the case presently). Therefore, when considering whether or not the contested sign falls under any of the relative grounds for refusal, it is the parties’ rights and their scope of protection as registered or applied for that are relevant. Consequently, the applicant’s arguments in this regard must be rejected as unfounded.

 

The Opposition Division only conducts a phonetic comparison when both trade marks can be pronounced or have a sound. Accordingly, a figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. In other words, purely figurative marks (i.e. those not containing any word element) are not subject to a phonetic assessment.

Aurally, earlier mark 1 and the contested sign cannot be compared. Both are figurative signs without any words or letters. In particular, and as mentioned above already, the contested sign is neither resembling the letter ‘V’ nor ‘S’. The same is true for the graphical element included in the representation of a shoe in earlier mark 1. This element will not be perceived as a particular letter by the relevant public.

As regards to earlier mark 2 and the contested mark similar considerations apply. The Opposition Division is of the opinion that earlier mark 2 will not be associated with any particular letter or number or symbol. The Opposition Division considers it unlikely that the relevant public may associate the contested sign with a particular letter, including the letters ‘V’ and / or ‘S’. The level of abstraction of the contested sign is high and does not in the view of the Opposition Division suggest any clear similarities to letters or numbers. Even in the unlikely event that parts of the public may associate the earlier mark with the letter ‘V’, they will not make such associations with regard to the contested sign. Consequently, earlier mark 2 and the contested mark cannot be compared aurally either.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Earlier mark 1 shows the depiction of a shoe with a particular graphical element on the side thereof, whereas the contested sign does not have any particular meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Earlier mark 2 does not have any particular meaning for the relevant public either, just like the contested sign. In particular, and as outlined above, the Opposition Division considers it unlikely that earlier mark 2 will be associated with any letter, number or symbol, although the graphical element has been described as being ‘V-shaped’. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. Even for the part of the public who may associate the earlier mark 2 with the letter ‘V’ anyways, the contested sign continues to have no meaning for such public and the signs are therefore not conceptually similar either.

 

d) Conclusion

 

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the earlier marks and the contested sign are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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 applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

The Opposition Division

 

 

Begoña URIARTE VALIENTE

Holger Peter KUNZ

Christian STEUDTNER

 

 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.