OPPOSITION No B 3 094 498

Vans, Inc., 1588 South Coast Drive, 92626 Costa Mesa, California, 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

Christian Chen, 9 Avenue Félix Eboué, 93150 Le Blanc-Mesnil, France (applicant), represented by Cabinet André Bertrand & Associés, 11 Rue Du Havre, 75 008 Paris, France (professional representative).

On 27/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 498 is upheld for all the contested goods.

2. European Union trade mark application No 18 078 318 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 078 318 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 4 022 539 ‘VANS’ (word 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 022 539.

a) The goods

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

Class 25: Men’s, women’s and children’s clothing, namely sweaters, jackets, pants, T-shirts, turtlenecks, gloves, hats, beanies, vests and footwear.

The contested goods are the following:

Class 25: Headgear; footwear; clothing.

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 to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed. However, this limitation applies only to sweaters, jackets, pants, T-shirts, turtlenecks, gloves, hats, beanies, vests which are indeed clothing articles and not to footwear, which is a separate category.

Footwear is identically contained in both lists of goods.

The contested headgear; footwear; clothing include as broader categories the opponent’s men’s, women’s and children’s clothing, namely sweaters, jackets, pants, T-shirts, turtlenecks, gloves, hats, beanies, vests. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is average.

c) The signs

VANS
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, who will perceive the earlier mark as the plural of the word ‘VAN’ of the contested sign. For this part of the public, the word ‘VAN’ of the contested sign and its plural ‘VANS’ of the earlier mark will be perceived as ‘a medium-sized road vehicle, used especially for carrying goods’ (information extracted from Cambridge Dictionary on 2711/2020 at https://dictionary.cambridge.org/dictionary/english/van?q=van_1). As this word, whether in the singular or plural form, has no particular meaning in relation to the relevant goods, its distinctiveness is normal.

The verbal element ‘R’ of the contested sign will be associated by the relevant public with the letter which it identifies. As this element has no direct or indirect relation to the relevant goods, it is considered distinctive.

The figurative element of the contested sign will be seen by a part of the public as a fanciful device. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, as the applicant sustains, the figurative element of the contested sign might be seen as the stylised combination of the letters ‘RV’, and, in this particular case, as the abbreviation of the initial letters of the two verbal elements ‘R-Van’, given the structure of the sign. In such a case, the impact of these letters is also limited (07/05/2009, T‑185/07, CK Creaciones Kennya, EU:T:2009:147, § 44).

The stylisation of the verbal element ‘R-Van’ in the contested sign will be merely perceived as a graphical means of bringing the verbal elements to the attention of the public and, therefore, its impact on the comparison of the signs will be limited.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘VAN’ and differ in the final letter ‘S’ of the earlier mark and the letter ‘R’, placed at the beginning of the contested mark and separated by a dash from the word ‘VAN’. The signs also differ in the figurative element and the stylisation of the contested sign (found to have a limited impact).

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the word ‘VAN’ and differ in the final sound ‘S’ of the earlier mark and the sound of the letter ‘R’, placed at the beginning of the contested mark and separated by a dash from the word ‘VAN’. It is very unlikely that the figurative element of the contested sign will be pronounced.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning conveyed by the verbal elements ‘VANS’/‘VAN’, the signs are conceptually similar to an above-average degree.

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’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural, and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical and target the general public, who possess an average degree of attention. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to an average degree and conceptually similar to an above-average degree, due to the coinciding word ‘VAN’. However, they differ in the final letter ‘S’ of the earlier mark and the letter ‘R’, placed at the beginning of the contested mark, and separated by a dash from the word ‘VAN’. The signs also differ in the figurative element and the stylisation of the contested sign (found to have a limited impact).

As the applicant sustains, generally, in clothes shops customers can either choose the clothes they wish to buy themselves or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, 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). In the present case, the visual similarity of the signs is average.

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 identity of the goods offsets the only-average degree of visual similarity.

Therefore, differences between the signs are clearly not sufficient to outweigh their visual, aural, and conceptual similarities. Consequently, the relevant public, when encountering the signs in relation to identical goods, is likely to think that they come from the same undertaking or from economically linked undertakings.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

It is common practice for companies to make small variations of their brands, for example, by altering their font or colour, or by adding terms or elements, to name new product lines or create a modernised version of the brand. Indeed, it is very likely that consumers will perceive the contested sign as a new version of the previous brand, denoting a special line entitled ‘R’, as both signs contain the distinctive element ‘VAN’ (albeit in plural in the earlier mark) (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 022 539. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 4 022 539 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Valeria ANCHINI

Francesca DRAGOSTIN

Meglena BENOVA

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.