OPPOSITION No B 3 049 402

Out-Fitz Concepts B.V., Mijlweg 92, 3295 KH, ‘s-Gravendeel, Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

Danle Ding, Arndtstrasse 1, 22085 Hamburg, Germany (applicant), represented by Pintz & Partners Llc, Csepreghy utca 2. II. em., 1085 Budapest, Hungary (professional representative).

On 14/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 402 is upheld for all the contested goods.

2. European Union trade mark application No 17 865 509 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 17 865 509 for the word mark ‘IZUMÖ’. The opposition is based on European Union trade mark registration No 9 354 242 for the word mark ‘ZUMO’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 9 354 242 for the word mark ‘ZUMO’.

The date of filing of the contested application is 27/02/2018. 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 27/02/2013 to 26/02/2018 inclusive.

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 relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 9: Sunglasses.

Class 25: Clothing, footwear, headgear.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 22/01/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 27/03/2019 to submit evidence of use of the earlier trade mark. On 19/03/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Exhibit 1: screen shot of the opponent’s website www.zumo-international.com showing a list of 18 ‘ZUMO’ stores in Europe, majority of them in the Netherlands, but also in Belgium and Germany.

• Exhibits 2 and 3: invoices, dated from March 2016 to February 2018, issued by the opponent to the addressees in Belgium, Germany, France and the Netherlands. The trade mark ‘ZUMO’ is clearly stated in the description of goods in relation to different pieces of men’s clothing such as shirts, T-shirts, cardigans, polos etc. Moreover, the logo appears on the top right corner of the invoices.

• Exhibit 4: screenshots of the opponent’s Facebook ‘Zumo International’ showing ‘ZUMO’ clothing and shoes for men in stylised letters or .

• Exhibit 5: ‘ZUMO’ catalogue for winter 2016, in English, for menswear.

The invoices show that the place of use is Belgium, Germany, France and the Netherlands. This can be inferred from the language of the documents (Dutch and German), the currency mentioned (euro) and some addresses in Belgium, Germany, France and the Netherlands. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely invoices and screenshots, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. A high number of invoices for considerable amounts of goods, even if they do not cover the whole relevant period, demonstrate that the trade mark ‘ZUMO’, clearly depicted in the description of the goods on all invoices, has genuinely been used in Belgium, Germany, France and the Netherlands during the relevant period in relation to menswear.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 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 earlier mark is registered as a word mark ‘ZUMO’. In the case of word marks, it is the word as such that is protected and not its written form.

In the submitted documents, the sign is used in figurative form such as or . The Opposition Division is of the opinion that the stylisation of the word or/and addition of a meaningless figurative element do not alter the distinctive character of the mark.

In view of the above, the Opposition Division considers that the use of the mark in the manners described above does not materially affect its distinctiveness and the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

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 (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45-46.)

The opponent is not required to prove all the conceivable variations of the categories of goods for which the earlier mark is registered and as use is demonstrated for a sufficient array of different types of men’s clothing, such as shirts, T-shirts, cardigans, polos, etc., the Opposition Division considers that the evidence shows genuine use of the trade mark for clothing in Class 25. These goods can be considered to form an objective subcategory of clothing, namely clothing for men. Therefore, the Opposition Division considers that the evidence shows genuine use of the earlier trade mark only for clothing for men.

In some evidence, such as Facebook screenshots; store locator website, footwear also appears. However, these goods do not appear in invoices and therefore the extent of use cannot be established.

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.

1. The goods

The goods on which the opposition is based, and for which use has been proven, are the following:

Class 25: Clothing for men.

The contested goods, after limitation of 27/11/2018, are the following:

Class 25: Clothing, namely, clothing for women; footwear, namely, footwear for women; headgear, namely, headgear for women.

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 applicant’s list of goods 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 specifically listed.

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.

The contested clothing, namely, clothing for women is similar to a high degree to the opponent’s clothing for men. They have the same nature, all being items of clothing, and the same purpose. They usually have the same distribution channels and their commercial origins usually overlap.

Headgear and footwear serve the same purpose as clothing: all are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear or headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all these products. For the above reasons, the contested footwear, namely, footwear for women; headgear, namely, headgear for women are similar to the opponent’s clothing for men. Even though one is destined for women and the other is for men, the abovementioned criteria still apply.

2. 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 similar to varying degrees are directed at the public at large.

The degree of attention is average.

3. The signs

ZUMO	IZUMÖ
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 common element ‘ZUMO’ is meaningful in certain territories, for example in those countries where Spanish is understood. The meaning of this element brings the signs closer to each other in the perception of this part of the relevant public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The element ‘ZUMO’ of the earlier mark will be understood as juice by the Spanish-speaking public. As it does not describe any characteristics of the relevant goods, it is distinctive. This meaning can also be perceived in the contested sign, at least by part of the relevant Spanish-speaking public.

The applicant argues that the contested sign will be associated with the Japanese province and city ‘IZUMO’. This meaning is not common knowledge and therefore it cannot be assumed that the relevant average consumer in Spain would be aware of it. The applicant’s claim cannot stand and in the lack of any evidence to the contrary, it has to be rejected as unfounded.

Visually, the signs coincide in the string of letters ‘*ZUMO’, which constitutes the whole earlier mark. However, they differ in the initial letter ‘I’ and the umlaut placed over the letter ‘O’ of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ZUMO’ present identically in both signs. As the umlaut is not used over an ‘O’ in Spanish, it will have no impact on the aural perception of the signs. The pronunciation differs in the sound of the letter ‘I’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a juice, the signs are conceptually identical, at least for part of the public. The remaining part of the public in the relevant territory might perceive the meaning only of the earlier mark as explained above and not dissect this word in the contested sign. 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.

4. 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.

5. Global assessment, other arguments and conclusion

The goods are partly similar to a high degree and partly similar. They target the public at large who have an average degree of attentiveness.

The signs are visually similar to an average degree, aurally similar to a high degree and conceptually either identical or not similar. The earlier mark enjoys a normal degree of distinctiveness.

The earlier mark is fully incorporated in the contested sign. They differ in one additional letter ‘I’ at the beginning and in the umlaut over the last letter ‘O’ of the contested sign.

Considering 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), the abovementioned and the fact that the earlier mark is fully incorporated in the contested sign results in a likelihood of confusion between them.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 9 354 242. It follows that the contested trade mark must be rejected for all the contested goods.

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, she 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

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Martin INGESSON

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.