OPPOSITION Nо B 3 122 238

 

Vinícius José Paixão de Oliveira Júnior, Camino de la Huerta 26, 28109 La Moraleja (Alcobendas), Spain (opponent), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., C/ Almagro, 9, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Louise Irene Lugthart - Geesink h.o.d.n. Geesink Studio, Overdam 33, 1081 CG Amsterdam, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 05/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 122 238 is rejected in its entirety.

 

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

 

REASONS

 

On 25/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 158 612 ‘V&R jr.’ (word mark), namely against all the goods and services in Classes 14, 16, 18, 25, 28 and 41. The opposition is based on European Union trade mark registration No 18 133 188 (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 and services on which the opposition is based are the following:

 

Class 14: Jewellery, precious stones; horological articles; fobs.

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites (except furniture); adhesives for stationery or household purposes; drawing materials and materials for artists; paint brushes; teaching materials [except apparatus]; plastic sheets, film and bags for wrapping and packaging; printers’ type, printing blocks.

Class 18: Trunks and travelling bags; suitcases; wheeled suitcases; leads for animals; backpacks; beach bags; handbags; satchels; sport bags; wallets; briefbags; purses; umbrellas; parasols; harnesses; saddlery; leather shoulder belts.

Class 25: Coats; waistcoats; jackets [clothing]; shirts; trousers; denim jeans; trousers shorts; skirts; gowns; tee-shirts; sweaters; jumpers; underwear; underwear; pyjamas; beachwear; swimming costumes; rainproof jackets; waterproof trousers; socks; stockings; waist belts; neckties; scarves; scarves; gloves [clothing]; shoes; boots; sandals; sports shoes; caps [headwear]; caps [headwear]; visors; headbands [clothing]; sportswear; furs [clothing]; leather clothing; leather caps.

Class 28: Balls for games; soccer ball goal nets; shin guards [sports articles]; knee pads; protectors for elbows; skateboards; toys; games; bags specially adapted for sports equipment.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

The contested goods and services are the following:

 

Class 14: Precious metals and their alloys and trinkets, works of art, trophies, key rings, key holders and key chains made therefrom or coated therewith, not included in other classes; jewels, jewels, precious stones and their imitations; horological and chronometric instruments; clocks; chronoscopes; medals; coins; jewellery boxes and watch boxes; badges of precious metal; parts of the aforementioned goods.

Class 16: Paper, cardboard and sacks and bags made therefrom, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; works of art and figurines of paper and cardboard, and architects' models; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; books, journals, magazines; tissues; plastic pouches; folders for papers; diaries; cards; sticking labels; stickers [stationery]; rub down transfers; pens; pencils; cases for stationery; wrapping paper; paper for wrapping and packaging; flags of paper; bookmarkers; book covers; calendars; gift certificates; prints; posters; decoration and art materials and media; stationery and educational supplies; money clips of precious metals, metal money clips; disposable refuse bags of paper, towels, plates, tablecloths, tissues, coasters, cleaning paper, beakers, bags, handkerchiefs and napkins, the aforesaid goods being disposable products of paper.

Class 18: Leather and imitations of leather and credit card cases and holders made therefrom, not included in other classes; animal skins, hides; trunks and travelling bags; casual bags; handbags; backpacks; sport bags; garment bags for travel; luggage tags; luggage tags; purses; wallets; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear; sportswear; nightwear; children's wear; pyjamas; tee-shirts; polo shirts, sweaters; hooded sweaters; jackets [clothing], sweat jackets; caps [headwear]; caps; shawls; headbands [clothing]; cuffs; costumes; belts[clothing]; underwear; socks; coveralls; gloves [clothing].

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for christmas trees; electronic playthings; action figures; scale model figures; festive decorations; fairground and playground apparatus; dolls; doll houses; computer game apparatus; coin-operated amusement machines; electronic arcade games (coin or counter operated apparatus); bags specially designed for gymnastic and sporting articles.

Class 41: Education; providing of training; sporting and cultural activities; entertainment; organisation, production and presentation of events for sporting, educational, cultural, recreational and/or entertainment purposes; organisation of meet and greet events; ticket agency services (training, entertainment and sport); seat reservation and mediation in reserving seats for sporting, educational, cultural, recreational and entertainment events; news programme services; photographic reporting; coaching services, classes and courses; arranging auditions, competitions and award ceremonies; arranging parties; games services provided via computer networks and global communication networks; providing of and rental of sporting facilities; rental of sporting articles and sports equipment (except vehicles); entertainment and leisure centres; publishing, distribution, issuing and lending of books, magazines, newspapers, articles, news reports, press releases, leaflets, brochures, information bulletins, periodicals and other printed matter, including in digital form, including of audiovisual and multimedia productions; production and rental of audio, video and film material; compiling, producing and directing of radio, television, audiovisual, musical, entertainment and theatre programmes; conducting audiovisual, musical, entertainment and theatre programmes; fan clubs; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet.

Some of the contested goods and services are identical or similar to goods and services 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 degree of attention with respect to most of the goods and services at issue is average, with the exception of, inter alia, the goods in Class 14, since in many cases these goods will be luxury items or will be intended as gifts. Hence, a high degree of attention on the part of the consumers may be assumed with respect to these latter goods (09/12/2010, R 900/2010-1, Leo Marco (fig.) / LEO, § 22).

 

c) The signs

 

	V&R jr.
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 a figurative mark likely to be perceived as containing some letters. Whilst it can be safely assumed that the relevant public will recognise the letters ‘J’ and ‘R’, in which the vertical stem is missing and/or must be seen as conjoined with the vertical stem of the letter ‘J’, the first shape present in the sign may require some mental effort to decipher it. This shape, consisting in a slanted line, departs from the standard graphemes in the relevant alphabets. It may thus be seen as an abstract device or – admittedly – part of the public may perceive it as a very highly stylised letter ‘V’ in which the right stem is missing.

For the purposes of this comparison, the Opposition Division will assess the signs from the perspective of the public which perceives the earlier mark as being composed of the letters ‘V’, ‘J’ and ‘R’, as this is the most advantageous scenario for the opponent.

The relevant public will not attribute any clear and specific meaning to the letter combination ‘VJR’ in the earlier mark. Rather, it will be perceived as a meaningless, fanciful combination of these letters that could be an abbreviation for any given expression containing three terms that start with these letters. Therefore, it is distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

In the contested sign, the letters ‘V’ and ‘R’ are linked by an ampersand symbol that is internationally understood and used as the conjunction ‘and’. It is distinctive. Accordingly, the combination of elements ‘V&R’ may be perceived as the initials of two concepts or name of persons. In any case, it has no clear meaning and is also distinctive.

The element ‘jr.’ in the contested sign will be perceived by at least part of the relevant public as an abbreviation for ‘junior’; ‘it is used after a man's name to distinguish him from an older member of his family with the same name; lower in rank or length of service; subordinate; younger in years’ (information extracted from Collins Dictionary on 18/06/2021 at https://www.collinsdictionary.com/dictionary/english/jr). Since it may be perceived as indicative of goods and services specifically aimed at young people, its distinctive character is reduced. However, it is not excluded that part of the public does not perceive any meaning in this element, in which case it is distinctive.

Taking into account the foregoing, all the elements of the contested sign may be perceived at least by part of the public as referring to two persons under the initial letters ‘V’ and ‘R’, where the last one is a younger man.

 

Visually, the signs coincide partially in the shape of the letters ‘V’ and ‘R’, although their specific depiction in the earlier mark differs. In the earlier mark, only the left slanting line forming the letter ‘V’ is depicted and the right part of the letter R, without its vertical line. The middle lowercase letter ‘J’ is depicted in between ‘V’ and ‘R’ and separated from these letters by broad spaces. These features are in clear contrast to the contested sign since it is a word mark. Therefore, the stylisation of the letters is visually an important aspect of the earlier mark as a whole.

The signs differ in the symbol ‘&’ placed in between the letters ‘V’ and ‘R’ in the contested sign. The opponent argues that the contested sign ‘is composed of the same letters, V R J R, in the same order, with the only difference of the symbol & as well as an additional letter R after it.’ However, the signs at issue have different structures and lengths, while the earlier mark is composed of three letters, the contested sign is composed of two letters, ‘V’ and ‘R’, linked by an ampersand symbol and followed by the letters ‘jr.’. The letter ‘J’ in the earlier mark is positioned in between the letters ‘V’ and ‘R’, while in the contested sign it forms part of the final, fourth, element of the sign, namely the abbreviation ‘jr.’ These differences are not insignificant and must be given due weight in the comparison.

In this regard, it must be taken into account that the length of signs may influence the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements.

Here, the visual overall impressions of the signs display immediately perceptible differences on account of the strikingly different stylisations of the letters of the earlier mark and the much longer appearance of the contested sign.

Therefore, for the public under analysis, the degree of visual similarity between the signs is considered to be very low.

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 ‘V’ and ‘R’, present identically in the first and third position in both signs. The pronunciation differs in the elements placed in between of these letters in the respective signs, namely in the sound of the letter ‘J’ in the earlier mark and the ampersand in the contested sign, which will be pronounced as the equivalent of the conjunction ‘and’ in any given language of the relevant territory. Furthermore, the pronunciation differs in the sound corresponding to the last element, ‘jr.’ (likely to be pronounced as ‘junior’ by a significant part of the public), in the contested sign.

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

Conceptually, for part of the public in the relevant territory, neither of the signs has a meaning and since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For another part of the public that would perceive the meaning of the element ‘jr.’ or even perceive the contested sign as the initials of two persons, being the last one a young man, the other sign has no meaning in that territory and thus since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services 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

The goods and services are assumed to be identical. They target the public at large and professionals. The relevant public’s degree of attention may vary from average to high. The earlier mark has an average degree of inherent distinctiveness.

As regards the similarity between the signs, even for the part of the relevant public that perceives the earlier mark as the combination of the letters ‘V’, ‘J’ and ‘R’, the degree of similarity between the signs is very low on the visual and aural levels.

As set out in detail in section c) of this decision, the conflicting signs display striking visual differences which are especially relevant considering the fact that the earlier mark is a short mark. This is a very important factor to be taken into account when evaluating the likelihood of confusion. Consequently, the overwhelming visual and aural differences weigh strongly against the finding that, for at least part of the public under analysis, the signs do not contain any concept that would help to differentiate between them. For another part of the public, however, the contested sign contains a concept on the element ‘jr.’ that, although of reduced distinctiveness, would help additionally to set the signs apart.

It is, therefore, concluded that the signs are not sufficiently similar to give rise to a situation where the relevant public directly confuses them, despite the imperfect recollection of the signs that consumers tend to rely on. Nor are the signs similar enough to lead the relevant public to think that they designate goods and services of the same undertaking, or an economically-linked undertaking, through likelihood of association.

Even assuming that the goods and services are identical cannot compensate for the differences identified between the signs.

In particular, as to the goods that consist of fashion items, it should be borne in mind that generally in the shops where the products such as those of Class 25 are purchased, customers can themselves either choose the clothes they wish to buy 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).

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.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings since the cited cases all involve conflicts between word marks or between a word mark and a figurative mark written in normal typeface, for example No 1 918 625 ‘ZAYA’/ , ‘AUMA’/ , ‘AKRI’/ and 'METO'/ . In addition, in all the invoked cases the signs differ only in one letter. The same is applicable to the judgment invoked by the opponent. The present case involve, however, an earlier mark which is highly stylised. Furthermore, it does not differ merely in one letter when compared with the contested sign, as established above.

Considering all the above, there is no likelihood of confusion on the part of the public that perceives the earlier mark as composed of the letters ‘V’, ‘J’ and ‘R’.

This absence of a likelihood of confusion equally applies to the remaining part of the public which perceives the earlier mark differently, as outlined in section c) of this decision. This is because, as a result of the presence of the different letter or undecipherable symbol in the earlier mark, that part of the public will perceive the signs as being even less similar.

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 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

 

 

Marta GARCÍA COLLADO

Marzena MACIAK

María del Carmen COBOS PALOMO

 

 

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.