OPPOSITION No B 2 464 249
Decover International, 24, rue Vuillermoz Balland, 01100 Oyonnax, France (opponent), represented by Cabinet Poncet, 7, chemin de Tillier B.P. 317, 74008 Annecy Cedex, France (professional representative)
a g a i n s t
Grendene S/A, Av. Pimentel Gomes, 214 Bairro: Expectativa, Sobral, CE 62040-050, Brazil (applicant), represented by Rafael Ortega Pérez, Diego A. Montaude 7, 1º Of 11, 35001 Las Palmas de Gran Canaria, Spain, (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some of the goods of European
Union trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark registration No 2 900 199.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 27/10/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 27/10/2009 to 26/10/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 9: spectacles, sunglasses, sports spectacles.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 18/08/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 23/10/2015 to submit evidence of use of the earlier trade mark. On 23/10/2015, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
One catalogue entitled X RIDER and issued by the opponent, showing different models of spectacles, sunglasses and sports spectacles. The inscription ‘X RIDER’ is clearly visible on two models. (Item A1)
One leaflet issued by the opponent and dated 2010, showing different models of spectacles, sunglasses and sports spectacles. The sequence ‘X RIDER’ can be seen at the top left of the pages and on one model of glasses. (Item A2)
Four pictures of sunglasses from the website www.commerce.sage.com, dated 2012. The earlier mark is either missing or illegible. (Item A3)
Two extracts from the website www.commerce.sage.com, dated 2012, showing ‘X RIDER’ spectacles for purchase. (Item A4)
Twenty eight invoices, all dated within the relevant period and covering five years, issued by the opponent to customers in France, Portugal and Spain. The sequence ‘X RIDER’ appears in several places on each page, namely in the email address, in the website name and in the clearly visible wording ‘X RIDER by DECOVER’. While the trademark is not mentioned in the designations and references of the invoices, the latter refer to models of spectacles which can be found in several other documents, particularly in the ‘X RIDER’ catalogue (Item A1). The invoices refer also to the sale of some goods for which the mark is not registered, such as parts of spectacles. (Item A5)
One notification of a licence recorded at EUIPO on 09/06/2011, concluded between the opponent and the German company UVEX SPORTS GmbH & Co. KG regarding the opponent’s trademark. An invoice of 20/12/2011 for the payment of yearly licence fees for the year 2012 is also attached. (Item A6)
Three delivery orders dated 2011 for sponsorship deals addressed to French recipients and referring to the delivery of approximatively 500 ‘X RIDER’ branded sports spectacles. (Item A7)
Two French publications (one online) dated 2009 and 2010 partially translated by the opponent, stating that the opponent was awarded the 2009 ARTINOV innovation trophy for the development of a flexible, high-resistance polymer hinge for spectacles and that its ‘X RIDER’ sun and sports spectacles are sold worldwide in very well-known stores (AFFLELOU, ATOLE, OPTIQUE 2000,…). (Item A8)
One ‘X RIDER’ leaflet regarding ‘X RIDER’ sports spectacles and showing different models. The mention ‘X RIDER’ is clearly visible on the model of the first page. Also attached is a cost estimate from a commercial printer and a printed sample. The cost estimate is dated 2010 and refers to the printing of up to 3,000 leaflets. (Item A9)
One ‘X RIDER’ sports spectacles advertising flyer and one invoice from a French commercial printer dated 2011 referring purportedly to the printing of 4,000 samples of said flyer. (Item A10)
One invoice from a French commercial printer dated 2010 relating to the delivery of 5,000 printed boxes. Also attached are copies of these purported boxes marked with ‘X RIDER’. (Item A11)
Six flyers and posters regarding different sports events which have taken place in 2010, 2011, 2013 and 2014 respectively. The sequence ‘X RIDER’ (sometimes with the adjunction of ‘lunettes de sports, lunettes solaires / sports spectacles, sunglasses’) is visible in these documents, apparently as a sponsor of these events. (Item A12)
Several EC declarations of conformity for ‘X RIDER’ sunglasses in Spanish, Portuguese, Italian, Dutch, English, German, French, Swedish, Danish, Finnish and Greek. (Item A13)
One extract from the website www.google.fr dated 06/03/2012 showing the search results for the request ‘xrider lunettes’ (xrider spectacles). The third result consists of the website of the opponent. (Item A14)
Four extracts of the archived website of the opponent www.lunettes-xrider.com, dated 2011 and 2014, in which the sequence ‘X RIDER’ is omnipresent and used in relation with glasses.
The documents show that the place of use is at least France, Portugal and Spain. This can be inferred notably from the language of the documents and addresses in these countries. Therefore, the evidence relates to the relevant territory.
Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (see order of 27/01/2004, C259/02, La Mer Technology, EU:C:2004:50).
In the case at hand, most of the materials submitted are within the relevant period and the undated evidence or referring to use outside this timeframe confirms use of the opponent’s mark within the relevant period. More generally, the final outcome depends on the overall assessment of the evidence. Even if some relevant factors are lacking in some items, the combination of all the relevant factors in all the evidence may still indicate genuine use. In the present case, the allegations of the opponent and the possibly less probative items are supported by the remaining probative evidence.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
Nature of use requires, inter alia, that the contested EUTM is used as a trade mark,that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.
The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods and the EUTM proprietor.
The Opposition Division considers, therefore, that the evidence, when assessed in its entirety shows use of the sign as a trade mark.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the mark is registered as and the mark has been used in a slightly stylised different manner: , sometimes in colour .
The use of a different slightly stylised script (and sometimes in colour) is acceptable as long as the words are clearly legible, as in the present case. Since this variation does not alter the distinctive character of the mark, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
It must be recalled that the purpose of Article 15 EUTMR is to allow the proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, ‘Bainbridge’, EU:T:2006:65, § 50). The Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary.
The mark also appears in part of the evidence next to a figurative element representing a grasshopper, in black or in colour:
In this case the earlier mark is clearly identifiable, dominant and individualised. The grasshopper may appear as an additional mark. It should be noted that the Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C-12/12, ‘SM JEANS/LEVI‘S’, EU:C:2013:253, § 36.).
Overall, the Opposition Division is satisfied that the signs used show use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the contested international trade mark registration under Article 15 EUTMR.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 12/03/2003, T174/01, Silk Cocoon, EU:T:2003:68).
In the present case, the evidence provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In particular, the invoices show non-negligible sales of ‘X RIDER’ branded spectacles within the relevant territory and period. On this last point, the opponent has shown that it has used the trade mark continuously over a time span of about five years during the relevant period in regular sales to several customers. The latter are located in different countries within the European Union such as France, Portugal and Spain. Moreover, it has been considered that the mark has been used as registered. Finally, the evidence showed use for all the goods for which the mark is registered. Consequently, it is possible to draw the conclusion that the opponent used the earlier mark in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods which it represents.
From the foregoing it can be surmised that the evidence does reach the minimum level necessary to establish genuine use of the earlier trade mark.
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 goods on which the opposition is based are the following:
Class 9: Spectacles, sunglasses, sports spectacles.
The contested goods are the following:
Class 9: Sunglasses.
The contested sunglasses are identically contained in both lists of goods.
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.
Earlier trade mark
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the whole European Union with the exception of the English-speaking part of the relevant public.
The earlier mark is composed of the verbal sequence ‘X RIDER’ in almost standard upper case letters, with the letter ‘X’ being bigger.
The contested sign features the stylised word ‘rider’ written in bold and italic lower case characters and preceded by an abstract green curved device. This word is also followed by a very small and undefined element, which is deemed as negligible. This element will not be taken into account further in the comparison.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
Visually, the signs coincide in the word ‘RIDER’, which constitutes the only verbal element of the contested sign and the longer of the two terms of the earlier mark. Moreover, this common element is clearly independent and visible in each case. The signs differ in the letter ‘X’ of the earlier mark and in the figurative element in the contested sign, as well as in minor variations of their typeface.
Furthermore, it is pointed out that, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Finally, similarities can be found in the structure of the signs. Indeed, both are composed of the combination of a single element followed by the word ‘RIDER’. In addition, it is not excluded that a part of the public will perceive the first half of a highly stylised letter ‘X’ in the figurative element of the contested sign.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs is the same in the sound of the word ‛RIDER’, present identically in both signs. The pronunciation differs in the sound of the letter ‛X’ of the earlier mark, which has no counterparts in the contested sign.
Therefore, the signs are similar to a high degree.
Conceptually, the common word ‘RIDER’ has no meaning for the public in the relevant territory.
The element ‘X’ of the earlier mark will be perceived as conveying a concept of a letter ‘X’.
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.
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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
According to the case law of the Court of Justice, in determining the existence of 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, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).
Moreover, the Court has set out the essential principle that 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 the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17).
In the present case, the contested goods are identical and the signs are visually similar to an average degree and even aurally highly similar. The similarity results from the distinctive element, which is independently included in both signs. Moreover, this word constitutes the only verbal element of the contested sign and the longer of the only two terms of the earlier mark.
The differences reside only in the first individualized letter 'X' of the earlier mark, in minor variations of typefaces and in the abstract figurative element of the contested sign, which are not sufficient to counteract the significant visual and aural similarity.
It should also be recalled that the signs show a similarity of structure and that the figurative element of the contested sign may even be perceived, by part of the public, as the first half of a letter ‘X’.
Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that they have kept in their mind (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, consumers normally perceive a mark as a whole and do not analyse its details.
Based on all the foregoing, it is considered that the overall impressions of the signs are sufficiently similar. In other words, the numerous and significant similarities between the signs are sufficient for a significant part of the public to believe that the conflicting goods come from the same undertaking or economically linked undertakings.
As a consequence, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public on which the Opposition Division focused the comparison of the signs, namely the whole European Union with the exception of the English-speaking part.
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 2 900 199. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Loreto URRACA LUQUE
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.