OPPOSITION No B 3 056 945

Vans, Inc., 1588 South Coast Dr., Costa Mesa, 92626, California, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010, Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Lv Di Si Technology Co., Ltd, 203, 2F, Building C, Yongchuang Kejiyuan Taoxia, Dalang Street, Longhua District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim Mietzel Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 945 is upheld for all the contested goods.

2. European Union trade mark application No 17 882 318 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 17 882 318 for the word mark ‘Vanis’. The opposition is based on European Union trade mark registration No 4 022 539 for the word mark ‘VANS’, in relation to which the opponent invoked Articles 8(1)(b) and 8(5) 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

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: Clothing; baby layettes for clothing; cyclists' clothing; waterproof clothing; costumes (masquerade -); footwear; hats; hosiery; gloves; scarves; girdles; costumes; sleep masks; wedding dresses; underwear.

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 and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed. It should also be clarified that, although hats, beanies, footwear, appear in the opponent’s list of goods after the expression ‘men's, women's and children's clothing, namely’, they do not constitute pieces of clothing, but headgear and footwear, respectively, and they will be perceived as such for the purpose of this examination.

The contested goods in Class 25

Footwear; hats; gloves are identically contained in both lists of goods.

The contested clothing includes, as a broader category, the opponent’s men's, women's and children's clothing, namely sweaters, jackets, pants, T-shirts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cyclists' clothing; waterproof clothing overlap with the opponent’s jackets which also covers jackets for cyclists and jackets made of waterproof material. Therefore, these goods are considered identical.

The contested scarves are highly similar to the opponent’s gloves, as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

The contested hosiery is similar to the opponent’s footwear. These goods have the same purpose. They usually coincide in producer and distribution channels.

The remaining contested goods are similar to at least a low degree to the opponent’s T-shirts. All these goods, at the very least, coincide in their usual manufacturers and are normally distributed through the same channels.

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 or similar are directed at the public at large.

The degree of attention is average.

c) The signs

VANS	Vanis
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 signs under comparison are meaningless in some territories of the European Union, for example in the Baltic language area and for the Slavic-speaking part of the public. This affects the perception of the signs by that public and the assessment of likelihood of confusion in these countries, as will be explained below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Baltic language area and the Slavic-speaking part of the public, namely the public in Bulgaria, the Czech Republic, Latvia, Lithuania, Poland and Slovakia.

The signs are word marks composed of single words, ‘VANS’ and ‘Vanis’, respectively. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are depicted in upper- or lower-case letters or a combination thereof, for example, the contested sign could be depicted in upper case, ‘VANIS’.

Since these words are meaningless for the relevant public, as limited above, their inherent distinctive character is average.

Visually and aurally, all the letters of the earlier mark, ‘VANS’, are entirely incorporated in the contested sign, ‘VAN*S’, and mostly in the same order. The contested sign differs only in its fourth letter, ‘I’, which, however, is not particularly striking visually or aurally and, additionally, it is located in the middle section of this sign, where it is more likely to be overlooked by the public. Therefore, the signs are visually and aurally highly similar.

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

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

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, 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).

In the present case, the goods are identical and similar to various degrees, including to at least a low degree. The signs are visually and aurally highly similar. As explained above in section c) of this decision, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark has a normal degree of distinctiveness for the relevant public, namely the public at large displaying an average degree of attention.

Both marks are verbal and composed of single words of similar lengths (4 and 5 letters, respectively). All the letters of the earlier mark, ‘VANS’, are entirely incorporated at the beginning and at the end of the contested mark, ‘VANIS’, and in the same order. It is settled case-law that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the signs coincide in their beginnings is of particular importance.

The only different element of the contested sign, the letter ‘I’, is located in its middle section where it is more likely to be overlooked by the public displaying an average degree of attention. 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).

Moreover, a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the 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, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Therefore, the fact that some of the contested goods are similar to (at least) a low degree to the opponent’s goods is compensated by high visual and aural similarity between the signs.

Bearing in mind the above, the Opposition Division is of the opinion that differences between the signs are not sufficient to counterbalance their similarities and the overall impression that the signs produce on the relevant public is that they are similar to each other.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the general public in Bulgaria, the Czech Republic, Latvia, Lithuania, Poland and Slovakia. In view of the similarities and the interdependence principle, a likelihood of confusion also applies to the contested goods that are similar to at least a low degree to the opponent’s goods. 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 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 and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Liliya YORDANOVA

Jakub MROZOWSKI

Ewelina ŚLIWIŃSKA

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.