V VICTORIA | Decision 2679671

Date Published: Oct 1, 2017

OPPOSITION No B 2 679 671

Victorinox AG, Schmiedgasse 57, 6438 Ibach-Schwyz, Switzerland (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Mohammed Ibrahim Al-Shamasy Trading Est., P.O. Box 5067, Riyadh 11422, Saudi Arabia (applicant), represented by Bourgeois Rezac Mignon, 17, boulevard Malesherbes, 75008 Paris, France (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 679 671 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods (in Classes 3, 18, 24 and 25) of European Union trade mark application No 14 907 257 (figurative mark:
“”). The opposition is based on international trade mark registrations No 763 828 and No 895 858 designating the European Union (both word marks: “VICTORINOX”). The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF EARLIER INTERNATIONAL TRADE MARK REGISTRATION NO 895 858 DESIGNATING THE EUROPEAN UNION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the evidence submitted by the opponent consists of a registration certificate with an expected expiration date of the registration/renewal of 15/08/2016.

On 02/06/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 07/10/2016.

The opponent did not submit any evidence concerning the renewal of the earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. Therefore, the procedure continues with the other earlier international trade mark registration No 763 828 designating the European Union.

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 in Classes 18 and 25 on which the opposition is based are the following:

Class 18: Leather and imitation leather, goods made thereof not included in other classes; trunks and travelling bags; beach bags, camping bags, shopping bags, handbags, traveling bags, school bags; rucksacks; umbrellas, parasols and walking sticks.

Class 25: Clothing, including sportswear, footwear, including sports shoes, headgear.

The contested goods in Classes 3, 18, 24 and 25 are 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 18: Leather wallets, travelling bags made of leather, purses made of leather; handbags made of leather, suitcase made of leather, briefcases made of leather, animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25: Clothing, footwear, headgear.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 (see the judgment of 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 3

All the contested goods are considered dissimilar to those of the earlier trade mark in Classes 18 and 25. Their natures and main purposes are different. The main purpose of clothing is to dress the human body, whereas the main purpose of the goods in Class 3, such as soaps; perfumery, essential oils, cosmetics, is to impart a scent to the body, stationery, etc. They do not have the same distribution channels and are neither in competition, nor complementary. The same reasoning applies to goods such as travelling bags in Class 18 which are for carrying things when travelling. Even though some fashion designers nowadays also sell perfumes, and travel accessories under their marks, this is not the rule; it tends to apply only to (commercially) successful designers. This is even more the case for the remaining contested goods, bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; hair lotions; dentifrices, which do not have any similarities to the goods of the earlier trade mark.

Contested goods in Class 18

Trunks and travelling bags; umbrellas and parasols; walking sticks are identically contained in both lists of goods.

The contested Leather wallets, travelling bags made of leather, purses made of leather; handbags made of leather, suitcase made of leather, briefcases made of leather, whips, harness and saddlery are included in the broad category of the opponent’s goods made of leather and imitation leather, not included in other classes. Therefore, they are identical.

The contested animal skins, hides have the same distribution channels, public and producers as the opponent´s Leather and imitation leather, not included in other classes. Therefore, they are similar.

Contested goods in Class 24

The contested textiles have the same purpose and public as the opponent’s leather and imitation leather, not included in other classes in Class 18. Furthermore, they are in competition with each other. Therefore, they are similar.

The main point of contact between textile goods, not included in other classes; bed covers; table covers in Class 24 and clothing in Class 25 is that they are made of textile materials. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, textile goods are considered dissimilar to clothing. This is even more the case for the other goods of the earlier trade mark, which do not have any similarities to any of the contested goods for the abovementioned reasons.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

VICTORINOX
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 earlier trade mark is a word mark, which is protected in all typefaces. It has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark on a square background consisting of a letter ‘V’ at the top and the word ‘VICTORIA’ written in smaller letters below it.

The element ‘VICTORIA’ (including the letter ‘V’ as its first letter) of the contested sign will be understood as a female forename. In Spain, it will also be understood as ‘victory’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs differ in the additional figurative elements of the contested sign, which are not present in the earlier trade mark. The depiction of the relatively large letter ‘V’ is repeated in the word ‘VICTORIA’, depicted underneath, as its first letter. The earlier trade mark has no comparable elements. In addition, the words ‘VICTORINOX’ and ‘VICTORIA’ have a different number of letters: the earlier trade mark has 10 letters, whereas the contested sign has 8. Even taking into account the word sequence ‘VICTORI’, which the signs have in common, the endings ‘NOX’ of the earlier trade mark and ‘A’ of the contested sign are visibly different. Taking into account the additional figurative elements of the contested sign, the depiction of the letter ‘V’ in setting, the different lengths of the words and their different endings, there is, regardless of the word sequence ‘VICTORI’ that they have in common, only a below average degree of visual similarity.

Aurally, the figurative elements will not be taken into account. The letter ‘V’ positioned on its own is only part of the contested sign. If pronounced, this letter, together with the same first letter of the following word, will give the contested sign a particular aural impression, which has no counterpart in the earlier trade mark. The same applies to the different endings, ‘NOX’ and ‘A’, of the signs. The letters ‘VICTORI’, which the signs have in common, will lead to an average degree of aural similarity if the additional letter ‘V’ of the contested sign is not pronounced. The degree of aural similarity will be less if this additional letter of the contested sign is pronounced.

Conceptually, the earlier trade mark has no meaning, whereas the letter ‘V’ of the contested sign will be perceived within the context of the following word, ‘Victoria’, and not as a separate letter. Since ‘Victoria’ has the abovementioned meaning(s), the signs are conceptually not 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.

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with all goods for which it is registered (see above). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence (see letter of 12/09/2016):

1. a printout from the opponent’s website (Annex 1);
2. a printout of a Wikipedia entry about the earlier trade mark (Annex 2);
3. an overview of the Swiss Army knives offered by the opponent (Annex 3);
4. a copy of the US Jewellery Awards 2000 with the VICTORINOX Swiss Army Knife listed as winner (Annex 4);
5. a letter from the Museum of Modern Art of 27/12/1977, New York, confirming that the Knife is part of the museum (Annex 5);
6. extracts from different magazines and publications naming the Swiss Army knife as ‘a design classic’ (Annexes 6-8).

The submitted documents are not even nearly sufficient to demonstrate a high degree of distinctiveness. There is no information as regards turnover, sales figures, invoices, affidavits, surveys on the mark’s recognition, advertisements and/or extracts from tax and/or commercial balances.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

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 essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). 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 a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods 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 contested goods are partly identical, partly similar and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly 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). The same applies to the different (leather) goods in Class 18. Therefore, the considerable visual differences between the signs caused by the additional figurative elements of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

The signs are visually similar to a below average degree, aurally similar to an average degree, at best, and conceptually not similar.

Taking into account the relevant visual, aural and conceptual differences between the signs, the fact that the visual perception of the marks in question will generally take place prior to purchase, the no more than normal degree of distinctiveness of the earlier trade mark and the average degree of attention of the consumers, there is, even for partly identical goods, no likelihood of confusion.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to distinguish them clearly from each other. The public will not think that the signs come from the same undertaking or economically linked undertakings.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

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COSTS

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Magnus ABRAMSSON

Peter QUAY

Julia SCHRADER

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.