OPPOSITION No B 3 060 998

Ferrino & C. S.P.A., Corso Lombardia, 73, 10099, San Mauro Torinese (TO), Italy (opponent), represented by Saconney & Cian, Corso Vittorio Emanuele II, 14, 10123, Torino, Italy (professional representative)

a g a i n s t

Yinghong Wen, Room 905 No. 704 Binjiang East Road Haizhu District, Guangzhou, Guangdong, China (applicant), represented by Metida Law Firm Zaboliene And Partners, Business center VERTAS, Gynéjų str. 16, 01109, Vilnius, Lithuania (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 998 is partially upheld, namely for the following contested goods:

Class 18: Pocket wallets; handbags; briefcases; travelling bags; school book bags; straps of leather [saddlery]; haversacks; travelling trunks.

2. European Union trade mark application No 17 893 215 is rejected for all the abovementioned goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 893 215, . The opposition is based on, inter alia, Italian trade mark registration No 1 304 861, . 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 marks on which the opposition is based, namely European Union trade mark registration No 291 054, ; Italian trade mark registration No 1 304 861, ; and international trade mark registration No 1 077 360 designating the European Union, .

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 27/04/2018.

The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Italy, respectively, from 27/04/2013 to 26/04/2018 inclusive.

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

international trade mark registration No 1 077 360

Class 18: Containers for personal effects, in particular rucksacks, backpacks, bags, sport bags, traveling bags, suitcases, briefcases, shoulder bags; walking sticks or sticks for mountaineering.

European Union trade mark registration No 291 054

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; backpacks; leather shoulder belts; haversacks; purses; net bags (handbags); wallets; card cases [notecases]; sling bags for carrying infants; vanity cases, not fitted; shopping bags; straps for soldiers’ equipment; walking cane handles; walking stick seats; attaché cases; satchels.

Italian trade mark registration No 1 304 861

Class 18: Leather and imitations of leather; animal skins; trunks and suitcases; umbrellas and parasols; walking sticks; whips and saddlery; backpacks; various bags.

According to Article 10(3) EUTMDR, 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 19/03/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 24/05/2019 to submit evidence of use of the earlier trade marks. As requested by the opponent (on 20/05/2019), this time limit was extended to 24/07/2019. On 24/07/2019, within the time limit, the opponent submitted evidence of use.

The opponent indicated that its submissions were ‘Confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, this special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential. However, the Opposition Division will describe the evidence in general terms, without disclosing potentially sensitive commercial information.

The evidence to be taken into account is the following.

• Exhibits 1, 6, 11, 16, 21, 25: ‘Ferrino’ outdoor catalogues from 2013 to 2018 referring to various products, and illustrating how the trade mark is affixed on the goods — in particular backpacks, trolleys and suitcases, bottle holders, vanity cases, and messenger bags. For example, .

• Exhibits 2, 3, 7, 8, 12, 13, 17, 18, 22, 23, 26, 27: photographs demonstrating the participation of ‘Ferrino’ in various fairs from 03/02/2013 to 20/06/2018. The sign is apposed on the stands. The fairs took place in Germany (‘ISPO’ in Munich and ‘Outdoor’ in Friedrichshafen). The opponent also provided the invoices for the participation fee for each fair.

• Exhibits 4, 9, 14, 19: sample of ‘Ferrino’ advertising materials for a campaign which ran from 24/01/2013 to 2016. The sign is affixed on the advertisements, most of which are in Italian (exhibits 4, 9, 14) and in English (exhibit 19 — undated).

• Exhibits 5, 10, 15, 20, 24, 28: 18 invoices from 14/01/2013 to 11/01/2018. The invoices refer to the products sold and feature the opponent’s company name and the sign on their cover pages. The invoices describe the articles present in the catalogues and include their tracking number. The products sold are mainly travelling bags, backpacks, haversacks, purses, wallets, card cases, vanity cases and shopping bags.

• Exhibit 29: screenshots, dated 23/07/2019, of samples of ‘Ferrino’ products sold on Amazon.com (mainly backpacks, fanny packs, shoulder bags, track bottles, travel neck pouches and carry systems). Moreover, one invoice (exhibit 20) refers to an Amazon order for travelling bags, backpacks, bottle holders, vanity cases and haversacks.

• Exhibit 30: sworn declaration signed by the CEO of Ferrino & C. S.P.A, dated 23/07/2019. This includes a table of figures showing sales volume and advertising investments in connection with ‘Ferrino’ trade marks, with reference to containers for personal effects (in particular rucksacks, backpacks, bags, sport bags, traveling bags, suitcases, briefcases, shoulder bags) in Italy and the European Union from 2013 to 2018.

Assessment of genuine use of the earlier trade marks

Time of use

Although some documents are dated outside of the relevant period, the invoices, catalogues and the evidence for participation in various fairs, dated within the relevant period, contain sufficient indication concerning the time of use.

Place of use

The evidence must show that the earlier marks have been genuinely used in the European Union and Italy.

The documents show that the place of use is, indeed, in the relevant territory. This can be inferred from the language of the documents (English and Italian), the currency mentioned (‘euros’ in the catalogues) and some addresses across the European Union, including Italy.

Furthermore, all the commercial catalogues (exhibits 1, 6, 11, 16, 21, 25) refer, at the end, to a list of official distributors of ‘Ferrino’ goods across the European Union (e.g. in France and Spain).

The documents also refer to advertising campaigns and are in English and Italian (exhibits 4, 9, 14, 19).

Finally, various exhibits (2, 3, 7, 8, 12, 13, 17, 18, 22, 23, 26 and 27) show the presence of a sign containing ‘FERRINO’ (such as ) at fairs in Germany (Munich and Friedrichshafen).

Therefore, the evidence relates to the relevant territories.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second paragraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

After an examination of the evidence submitted by the opponent, it has been shown that different versions containing the verbal element ‘FERRINO’ have been used on the opponent’s goods, namely and . These signs reproduce exactly the registered figurative international registration designating the EU and the European Union trade mark registration .

Furthermore, 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.

Generally, the purpose of this provision 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 General Court also stated that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

After an examination of the evidence submitted by the opponent, namely the outdoor catalogues, it appears that the international trade mark, registered as , is occasionally used as .

The word element remains the same and it has the same typeface as registered.

The sign only differs in the position of the figurative element, which is at the beginning of the word element instead of above it. These minor changes do not alter the distinctive character of the sign.

None of the opponent’s submissions show the use of the Italian figurative trade mark . However, the use of the signs and does not alter the distinctive character of the Italian earlier right as registered. Indeed, the word element is identical to that used in the evidence, except with a slightly different typeface and without the figurative elements. However, these differences are not of such impact as to alter the distinctive character of the Italian earlier mark. Therefore, the use of these signs constitutes genuine use of the earlier Italian mark.

In view of the above, it is considered that the evidence does show use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Extent of use

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 evidence in support of the extent of use consists, in particular, of several invoices and of a declaration signed by the opponent’s CEO (exhibit 30), including a table of figures showing the sales volume and advertising investments in connection with the earlier trade marks.

Moreover, the 18 non-consecutive sample invoices refer to various items on which the trade mark FERRINO is affixed that were sent to different clients throughout several years of the relevant period.

Genuine use does not require commercial success but just real exploitation on the market (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

The rest of the documents, such as photographs from fairs, advertising, and professional catalogues, are further indications of genuine use on the market.

Therefore, although the number of invoices dated within the relevant period may not be overwhelmingly high, the Opposition Division considers that the opponent has provided sufficient indications.

Conclusion

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).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks. Indeed, no proof has been submitted regarding use for walking sticks or sticks for mountaineering; leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks; umbrellas and parasols; whips and saddlery; straps for soldiers’ equipment; attaché cases; satchels.

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.

In the present case, the evidence shows genuine use of the trade marks for the following goods:

international trade mark registration No 1 077 360:

Class 18: Containers for personal effects, in particular rucksacks, backpacks, bags, sport bags, traveling bags, suitcases, briefcases, shoulder bags.

European Union trade mark registration No 291 054:

Class 18: Travelling bags; backpacks; haversacks; purses; wallets; card cases [notecases]; vanity cases, not fitted; shopping bags.

Italian trade mark registration No 1 304 861:

Class 18: Suitcases; backpacks; various bags.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 Italian trade mark registration No 1 304 861, .

1. The goods

The goods on which the opposition is based, after the examination of proof of use, are the following:

Class 18: Suitcases; backpacks; various bags.

The contested goods are the following:

Class 18: Leather, unworked or semi-worked; pocket wallets; handbags; briefcases; travelling bags; school book bags; fur; haversacks; travelling trunks.

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 handbags; briefcases; travelling bags; school book bags; haversacks are included in the broad category of the opponent’s various bags. Therefore, they are identical.

The contested travelling trunks is highly similar to the opponent’s various bags. Indeed, they have the same purpose and nature. Moreover, they usually coincide in producer, relevant public, distribution channels and method of use.

The contested pocket wallets are similar to the opponent’s various bags, as they usually coincide in producer, relevant public and distribution channels.

The contested straps of leather [saddlery] are similar to the opponent’s various bags, as the latter may include bags used for the practice of horseback riding and, therefore, they will coincide in producer, distribution channels and relevant public.

The contested leather, unworked or semi-worked; fur; are dissimilar to all the opponent’s goods. The mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T‑270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T‑288/12, Zytel, EU:T:2014:196, § 39-43).

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

Therefore, the public’s degree of attentiveness is, on the whole, average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 consisting of the verbal element ‘FERRINO’ depicted in slightly stylised, black, upper-case italic letters.

The contested sign is a figurative mark consisting of the verbal element ‘Ferricos’ depicted in black italic letters. The initial letter, ‘F’, is depicted in upper case.

The element ‘FERRINO’ of the earlier mark might be understood by the relevant public as an Italian family name. However, its meaning does not relate to the relevant goods in any way. Therefore, it is distinctive.

Likewise, the element ‘Ferricos’ of the contested sign, although possibly associated with a family name, has no meaning related to the relevant goods. Therefore, it is distinctive.

Neither of the signs has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the presence of the letters ‘FERRI*O — six out of seven (in the earlier mark) or eight (in the contested sign) letters/phonemes. 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. The signs coincide in the beginnings of their verbal elements and both are depicted in black.

However, they differ in the letter ‘N’ of the earlier mark and in the letters ‘C’ and ‘S’ of the contested sign, all placed close to the end of the respective signs.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of ‘FERRI’ and in that of ‘O’, in seventh position, present identically in both signs.

The pronunciation differs in the sound of ‘C’ and ‛S’ at the end of the contested mark and in ‘N’ in the penultimate position in the earlier mark. The signs are not short and have the same initial rhythm and intonation.

Therefore, the signs are aurally similar to a high degree.

Conceptually, if the signs are associated with family names, as they will not be associated with the same or a related family name, then the conceptual comparison is neutral. If the signs are not associated with any meaning, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any relevant evidence within the substantiation period in order to prove such a claim.

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and business professionals, and the degree of attention is, in general, 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).

The signs create highly similar visual and aural impressions overall, as both signs contain the identical sequence of letters, ‘FERRI’, which is placed at the beginning of the signs. Moreover, the signs do not have a dominant element that would allow the visual difference to counteract the overall similar impressions.

The differences between the signs are placed at the end of these elements, and are insufficient to outweigh the similarities between them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian public and, therefore, the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European trade mark registration No 291 054 for the figurative mark

• international trade mark registration No 1 077 360 designating the European Union for the figurative mark .

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Justyna GBYL

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

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.