OPPOSITION No B 3 125 487

Vtec Limited, Office B, 21F Haven Commercial Building, 6-8 Tsing Fung Street, Tin Hau, Hong Kong - Special Administrative Region of the People’s Republic of China (opponent), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative)

a g a i n s t

N-Cubator B.V., Markt 19, 6071JD Swalmen, The Netherlands (applicant).

On 30/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 125 487 is upheld for all the contested goods and services, namely:

Class 25: Clothing, namely, shirts, pants, coats, suits, dresses; casual, children’s, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes.

Class 35: Retail store services in relation to clothing.

Class 41: Production of radio and television programmes; film production; educational research services; education and training services, namely, providing classes, seminars, workshops in the fields of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; law enforcement training services; language training services; entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; presenting live musical performances; film distribution; providing television programmes, not downloadable, via video-on-demand transmission services; arranging and conducting seminars in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; arranging and conducting educational congresses in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; publication of electronic books and journals on-line.

2. European Union trade mark application No 18 163 418 is rejected for all the contested goods and services. It may proceed for the remaining non-contested goods and services.

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

REASONS

On 03/07/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 163 418 for the word mark ‘VENOM’, namely against all the goods and services in Classes 25 and 41 and against some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registrations No 9 398 454 and No 15 557 408, both for the 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.

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 registrations No 9 398 454 and No 15 557 408.

a) The goods and services

The goods and services on which the opposition is, inter alia, based are the following:

 EUTM registration No 9 398 454

Class 25: Shorts; sports footwear, in particular for martial arts; t-shirts; bermuda shorts; sweatshirts.

 EUTM registration No 15 557 408

Class 41: Education; providing of training; entertainment.

The contested goods and services are the following:

Class 25: Clothing, namely, shirts, pants, coats, suits, dresses; casual, children’s, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes.

Class 35: Retail store services in relation to clothing.

Class 41: Production of radio and television programmes; film production; educational research services; education and training services, namely, providing classes, seminars, workshops in the fields of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; law enforcement training services; language training services; entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; presenting live musical performances; film distribution; providing television programmes, not downloadable, via video-on-demand transmission services; arranging and conducting seminars in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; arranging and conducting educational congresses in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; publication of electronic books and journals on-line.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

The contested casual, children’s, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; leisurewear, namely, leisure shoes are included in the broad category of the opponent’s footwear, in particular for martial arts, as ‘for martial arts’ is merely an example, as explained above. Therefore, they are identical.

The contested clothing, namely, shirts, pants, coats, suits, dresses; swimwear; sportswear; leisurewear, namely, leisure suits are at least similar to a high degree to the opponent’s shorts; t-shirts; bermuda shorts; sweatshirts, as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, particularly in the case of clothing designed to give protection against the elements. They also target the same public. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason it is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both clothing and headgear. Taking all these factors into account, the contested headwear, namely, hats, headbands and caps and the opponent’s shorts; t-shirts; bermuda shorts; sweatshirts are considered similar.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary, and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retail store services in relation to clothing are similar to the opponent’s shorts; t-shirts; bermuda shorts; sweatshirts in Class 25.

Contested services in Class 41

The contested publication of electronic books and journals on-line is similar to the opponent’s providing of training. Providing online electronic publications involves the provision of content, which may be training material. These services usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

All the remaining contested services in this class are included in one of the broad categories of the opponent’s education; providing of training or entertainment. Therefore, they are identical.

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 found to be identical or similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average (Classes 25 and 35) to higher than average (some services in Class 41) depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	VENOM
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Both earlier trade marks protect the same figurative mark ‘VENUM’. For reasons of simplicity, both marks will hereinafter be referred to as one mark in the singular.

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 English-speaking public in the relevant territory will perceive the contested sign ‘VENOM’ as poison produced by some animals, especially snakes and insects. This verbal element is not descriptive or otherwise weak in relation to the relevant goods and services in Classes 25, 35 and 41, and is, therefore, distinctive.

At least a significant part of the public will perceive the figurative element of the earlier mark as the head of a cobra or a snake, or as a spider. For the English-speaking public, because these animals are known as venomous, the verbal element ‘VENUM’ will be regarded as a misspelling of the word ‘venom’ (05/11/2019, R 2351/2018‑2, VENIMO V (fig.) / VENUM (fig.) et.al., § 30). This will also be the case because those words are very similarly, if not identically, pronounced. Both the figurative element and the verbal element have a normal degree of distinctiveness in relation to the relevant goods and services in Classes 25 and 41.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the relevant English-speaking part of the public.

The earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements, the figurative and verbal elements are co-dominant (05/11/2019, R 2351/2018‑2, VENIMO V (fig.) / VENUM (fig.) et.al., § 29).

Visually, the signs coincide in the letters ‘VEN*M’, of the sole verbal element of the earlier mark and the entire contested sign. However, they differ in their penultimate letters, ‘U’ in the earlier mark and ‘O’ in the contested sign, which will get less attention, since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, they differ in the specific stylisation of the verbal element in the earlier mark, which, however, does not impede the identification of this verbal element, and the figurative element in the earlier mark which is equally as important as the verbal element.

Therefore, taking into account the graphical depiction and specific stylisation of the earlier mark, they are visually similar to a below-average degree.

Aurally, the signs coincide in the pronunciation of the letters ‘ven*m’ and the differing letters have very limited impact on the pronunciation, as they will be pronounced very similarly, if not identically. Consequently, the signs are aurally similar to at least a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The relevant public will associate both signs with the concept of ‘venom’ (somewhat induced and/or reinforced by the figurative element in the earlier mark). Therefore, the signs are conceptually similar to a high 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.

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 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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and 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).

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and a professional public. The level of attention varies from average to higher than average.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods and services are partly identical and partly similar to varying degrees (both average and high).

The signs are visually similar to a below-average degree, aurally at least similar to a high degree and conceptually similar to a high degree.

Taking into account the coincidences between the signs, and the identity and similarity (both average and high) between the goods and services, it is considered that the relevant public, even with a higher than average degree of attention, might believe that the conflicting goods and services come from the same or economically linked undertakings.

It is true that as far as the goods in Class 25 are concerned, 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) as the choice of an item of clothing is generally made visually. However, although the visual differences in the present case are relevant, it is considered that the at least high aural similarity and the high conceptual similarity, is sufficient to counterbalance the below-average degree of visual similarity between the signs. Moreover, the below-average degree of visual similarity, when considering the relevant goods in Class 25, is also outweighed by the identity and similarity (both high and average) between the goods, according to the interdependence principle mentioned above.

Considering all the above, there is a likelihood of confusion on the part of a significant 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 registrations No 9 398 454 and No 15 557 408. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade marks lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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, it 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

Chantal VAN RIEL

Saida CRABBE

Michal KRUK

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.