OPPOSITION Nо B 3 087 307

Vans, Inc., 1588 South Coast Drive, Costa Mesa, California, 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

Shenzhen Oudu Electronic Technology Co., Ltd., B603, Huangjia Meilong Gongguan, Meilong Rd, Minzhi Str., Longhua New Dist., Shenzhen, People’s Republic of China (applicant), represented by Manuel De Arpe Tejero, Calle Islas De Cabo Verde 86 1º, 28035 Madrid, Spain (professional representative).

On 09/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 307 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 of European Union trade mark application No 18 052 423 for the word mark ‘Vansdon’. The opposition is based on European Union trade mark registration No 11 254 836, for the word mark ‘VANS’. 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

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

Class 9: Cases adapted for mobile phones; cases for mobile phones; leather cases for mobile phones; phone covers (specifically adapted), telephone covers; com-pact disc cases; DVD cases; spectacle cases, parts and accessories for mobile phones; mobile telephone cases; mobile telephone case made of leather or imitations of leather, mobile tele-phone covers made of cloth or textile materials; headphones, audio speakers; audio recorders; microphones; apparatus for recording, transmission or reproduction of sound or images, mouse pads, computer hardware, computer hardware for telecommunications, computer cases; e-reader cases; bags and sleeves for mobile phones, telephone, mobile phone, and cell phone covers; audio/stereo accessories, namely, headphones, mousepads, carrying cases for storing and transporting portable computers and personal data assistants; mobile and cell phone cases; computer cases; e-reader cases bags, sleeves and pads.

Class 17: Bags, envelopes, pouches of rubber for packaging; sleeves of rubber for protecting from damage through impact; rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18: Bags, envelopes, pouches of leather for packaging; calling card cases; leather and imitations of leather, and goods made of these materials and not included in other classes; 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; rucksacks; hip bags; key rings; card holders; hip bags.

The contested goods are the following:

Class 9: Computer keyboards; mouse [computer peripheral]; mouse pads; bags adapted for laptops; protective films adapted for computer screens; covers for tablet computers; stands adapted for laptops; chronographs [time recording apparatus]; protective films adapted for smartphones; covers for smartphones; earphones; tripods for cameras; selfie sticks [hand-held monopods]; bags for cameras and photographic equipment; USB cables for cellphones.

Some of the contested goods 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 listed above. The examination of the opposition will proceed as if all the contested goods 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 assumed to be identical are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

VANS	Vansdon
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 earlier mark is the plural of the English word ‘VAN’, ‘a medium-sized road vehicle, used especially for carrying goods’ (information extracted from Cambridge Dictionary on 08/07/2020 at https://dictionary.cambridge.org/dictionary/english/van?q=van_1). The word will also be understood in other languages such as Bulgarian, Dutch, French, German and Romanian, because the word ‘VAN’ also exists in these languages. As the earlier mark has no particular meaning in relation to the relevant goods, its distinctiveness is normal. However, for another part of the relevant public, the earlier mark is meaningless and therefore also has a normal degree of distinctiveness for this part of the relevant public.

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25; 22/10/2015, C‑20/14, BGW/BGW, EU:C:2015:714, § 35). The opponent did not dispute this fact and explicitly mentioned in its submission that the contested mark is a single word mark.

Possible exceptions to the above rule are situations where a word sign is broken down into elements which, for the relevant consumers, suggest a specific meaning or resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Word marks can also be visually broken down through the use of specific punctuation marks (e.g. hyphens, dots) (23/09/2009, T‑391/06, S-HE, EU:T: 2009 348, § 46), or due to irregular capitalisation.

In view of the above, the Opposition Division concludes that the contested sign’s verbal element ‘Vansdon’ will be seen by the relevant public as a single meaningless unit and it is therefore distinctive to a normal degree.

Visually, the signs coincide in the letters ‘VANS’, which are the entire earlier mark and the first four letters out of seven in the contested sign. The signs differ in the final three letters ‘DON’ in the contested sign.

The identified coincidence is in four letters of the contested sign, whereas the remaining three letters have no counterpart in the earlier mark. Therefore, the signs differ significantly in their length.

Moreover, the sequence of letters ‘VANS’ in the contested sign does not stand out and consumers would not see it as a separate verbal element. The contested sign has seven letters, which makes it quite unlikely that consumers will disregard or pay less attention to the letters at the end of the word, that is, to the differing letters. Where word marks are relatively short, as in the case in question, the central elements are as important as the elements at the beginning and end of the sign (20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39 and the case-law cited). It cannot be excluded that signs may be considered to have a low degree of similarity, or even be different, from a visual point of view, even though they contain a sequence of identical letters (11/12/2013, T‑487/12, Panini, EU:T:2013:637, § 42).

In the light of the foregoing, the signs are considered visually similar to a very low degree.

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 ‛VANS’, present identically in both signs. The pronunciation differs in the sound of the letters ‛DON’ of the contested sign, which have no counterparts in the earlier mark.

The earlier mark will be pronounced as a short word, without any significant pause, while in the contested sign ‘VANS’ does not have any autonomous function, but is closely linked to the following string of letters ‘DON’ (12/11/2009, T‑438/07, SpagO, EU:T:2009:434, § 26). Moreover, there is nothing that prompts the relevant public to perceive the coinciding part ‘VANS’ as a separate verbal element. The signs are of different lengths, the contested sign having almost double the number of letters, and have a different number of syllables (i.e. one versus two).

Therefore, the signs are considered, at most, aurally similar to a very low degree.

Conceptually, although part of the public in the relevant territory will perceive the meaning of the earlier mark explained above, the contested sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For those who do not see any meaning in the earlier mark, a conceptual comparison is not possible, and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

e) Global assessment, other arguments and conclusion

The appreciation of 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, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

In the present case, the goods have been assumed to be identical and target the general public who will display a degree of attention ranging from average to high.

The Opposition Division has assumed in section d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In the present case, even if the earlier right enjoys enhanced distinctiveness, the signs are visually and aurally similar to a very low degree due to the commonality of the first four letters ‘VANS’. Conceptually, the signs are not similar or, at best, lead to a neutral assessment, since the contested sign is meaningless, whereas the earlier mark could convey a meaning to part of the relevant public.

Therefore, even though the goods have been assumed to be identical, the differences between the signs are sufficient to exclude any likelihood of confusion between them. Moreover, the degree of attention displayed by the relevant consumers in relation to these goods varies from average to high (as explained in section b), and, therefore, the differences between the signs are more likely to be perceived by the relevant public (21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 112).

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). In the present case, the assumed identity of the goods at issue is not sufficient to counterbalance the signs’ very low degree of visual and aural similarity.

The opponent refers to previous decisions of the Office to support its arguments, (21/06/2019, B 3 056 945, VANS v VANIS). 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. The previous case referred to by the opponent is not relevant to the present proceedings, since the compared signs were found visually and aurally similar to a high degree, while in the present case they are visually and aurally similar to a very low degree.

Considering all the above, even assuming that the goods are identical and the earlier mark enjoys an enhanced distinctiveness, there is no likelihood of confusion on the part of the public.

Therefore, the opposition based on Article 8(1)(b) EUTMR 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 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

Cristina SENERIO LLOVET

Francesca DRAGOSTIN

Matthias KLOPFER

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.