VICTORY KAI XUAN | Decision 2621707 - Deichmann SE v. DA YONG HAN
Date Published: Sep 25, 2017
OPPOSITION No B 2 621 707
Deichmann SE, Deichmannweg 9, 45359 Essen, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)
a g a i n s t
Da Yong Han, C/ Matarrosa, 1- Pol. Ind. Cobo Calleja, 28947 Fuenlabrada, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via 69 -5°, Of. 510, 28013 Madrid, Spain (professional representative).
On 04/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 621 707 is partially upheld, namely for the following contested goods:
Class 9: Boots [protective footwear]; protective industrial boots; safety boots for use in industry [for protection against accident or injury]; thermal protective aids [clothing] for protection against accident or injury; fireproof clothing.
Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols.
Class 25: Headgear; clothing.
2. European Union trade mark application No 14 690 218 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 690 218, namely against some of the goods in Classes 9 and 18 and against all the goods in Class 25. The opposition is based on, inter alia, International trade mark registration No 819 143 designating Portugal. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 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 all the trade marks on which the opposition is based, in particular German trade mark No 303 185 287, German trade mark No 302 210 164, International trade mark registration No 819 143 designating inter alia Portugal and International trade mark registration No 784 495 designating inter alia the European Union. Subsequently, the opponent waived the earlier German trade marks as a basis for the opposition.
The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s International trade mark registration No 819 143 designating Portugal.
In the present case the contested trade mark was published on 23/10/2015.
Earlier trade mark No 819 143 is an international registration designating several Member States, amongst which Portugal. Each Member State has either a 12 or 18 month deadline to issue a provisional refusal under the Madrid Protocol. For the designation of Portugal, the 12 month deadline applies. Where a provisional refusal is issued within this deadline, the date that will be decisive in determining whether the mark is subject to proof of use obligation is the date when the proceedings leading to the provisional refusal are concluded, namely when the Statement of Grant of Protection is issued. Additionally, where a provisional refusal has not been issued, but a Statement of Grant of Protection is issued prior to the expiry of the 12 month deadline, this will be the decisive date.
For the designation of Portugal, the Statement of Grant of Protection was published by WIPO on 16/06/2011. It can be inferred from this date that the earlier mark had not been protected for at least five years on the relevant date. Therefore, the request for proof of use is inadmissible for Portugal.
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
The goods on which the opposition is based are the following:
Class 18: Goods made of leather and imitations of leather, namely bags and other containers not adapted to their special content as well as small leather articles, in particular purses, wallets, key cases; trunks and suitcases; travelling bags; rucksacks; bags for sports; leisure bags; umbrellas, parasols and walking sticks.
Class 25: Clothing; footwear; headgear; hosiery.
Class 28: Games and playthings; gymnastic and sporting articles (included in this class) with the exception of accessories for tennis, squash, badminton, table tennis and golf.
After a limitation filed by the applicant on 16/12/2015, the contested goods are the following:
Class 9: Boots [protective footwear]; protective industrial boots; safety boots for use in industry [for protection against accident or injury]; thermal protective aids [clothing] for protection against accident or injury; fireproof clothing.
Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols; shoulder belts; chin straps, of leather; kid; boxes made of leather; boxes of leather or leather board; leatherboard; girths of leather; leather laces; straps for soldiers' equipment; straps made of imitation leather; straps for skates; shoulder straps; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitation leather; leather, unworked or semi-worked; leather for furniture; leather for shoes; chamois leather, other than for cleaning purposes; leather thread; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; moleskin [imitation of leather]; faux fur; semi-worked fur; worked or semi-worked hides and other leather; industrial packaging containers of leather; studs of leather; leather cloth; leather straps.
Class 25: Headgear; clothing.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
Furthermore, 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 with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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.
Contested goods in Class 9
The contested boots [protective footwear]; protective industrial boots; safety boots for use in industry [for protection against accident or injury] are similar to a low degree to the opponent’s footwear in Class 25 as they have the same nature. They can coincide in end user and method of use.
The contested thermal protective aids [clothing] for protection against accident or injury; fireproof clothing are similar to a low degree to the opponent’s clothing in Class 25 as they have the same nature. They can coincide in end user and method of use.
Contested goods in Class 18
Bags, wallets, umbrellas, parasols are identically contained in both lists of goods.
The contested luggage, other carriers are included in the broad category of, or overlap with, the opponent’s bags and other containers not adapted to their special content. Therefore, they are identical.
The contested chin straps, of leather; leatherstraps; straps for soldiers' equipment; straps made of imitation leather; straps for skates; shoulder straps are all straps specially designed for fastening different types of things, e.g. headgear such as sport helmets, crash helmets etc, or to hold something in place. The nature of these goods is very different from that of the opponent’s goods in Class 18 as well as from those of the opponent’s goods in Classes 25 and 28. They serve very different purposes. They do not usually have the distribution channels and they are usually not made by the same manufacturers. These goods are considered dissimilar.
The contested kid; leather thread; leather, unworked or semi-worked; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitation leather; leatherboard; leather for furniture; leather for shoes; chamois leather, other than for cleaning purposes; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; moleskin [imitation of leather]; faux fur; semi-worked fur; worked or semi-worked hides and other leather; studs of leather; leather cloth; industrial packaging containers of leather in Class 18 refer to the part of skins of various kinds of animals or imitations thereof. These are raw materials or semi-finished products, or in any event goods that are to be used for manufacturing or packaging other products. However, the fact that one product is used for manufacturing another (for example, leather for bags or for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53) The abovementioned contested raw or semi-finished materials and goods in Class 18 are intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-88/12, Zytel, EU:T:2014:196, § 39-43). They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods. Therefore, these goods are dissimilar to all of the opponent’s goods in Classes 18, 25 and 28.
The remaining contested goods in this Class, namely boxes made of leather; boxes of leather or leather board; girths of leather; leather laces are also dissimilar to all of the opponent’s goods in Class 18. They do not have the same nature or purpose and they target different consumers. Furthermore, they are not complementary or in competition and they do not have the same distribution channels. For these reasons, these goods are also considered dissimilar to all of the opponent’s goods in Classes 14, 25 and 28.
Contested goods in Class 25
Headgear; clothing 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 or similar are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise (e.g. protective industrial boots; safety boots for use in industry [for protection against accident or injury] in Class 9).
The degree of attention is considered to vary from average to high, depending on whether the goods affect the state of health (e.g. for fireproof clothing).
- The signs
Victory | |
Earlier trade mark | Contested sign |
The relevant territory is Portugal.
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 word mark, consisting of the term ‘Victory’, an English word, which will be recognised by a significant portion of the relevant public, since this English term is rather similar to the equivalent word in Portuguese (‘Vitória’). As this word is not descriptive, allusive or otherwise weak for the relevant goods, it has a normal degree of distinctiveness.
Since the earlier mark is a word mark, it has no elements that could be considered clearly more dominant than other elements. Furthermore, it is irrelevant that word mark is depicted using a mixture of lower and upper case letters. Indeed, according to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). Consequently, the protection offered by the registration of a word mark applies to the word(s) stated in the application for registration, i.e. in the present case ‘VICTORY’, not to the individual graphic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).
The contested sign is a figurative mark consisting of the verbal elements ‘K’, ‘VICTORY’ and ‘KAI XUAN’, all in standard, white, bold and upper case letters, against a black square background. The letter ‘K’ is slightly stylised and depicted above the term ‘VICTORY’; the latter term, on its turn, is placed above the elements ‘KAI XUAN’ which are depicted in a significantly smaller font.
The contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. In addition, it is depicted in a very small size. Consequently, this will not be taken into consideration for the purposes of comparison.
As detailed above, the term ‘VICTORY’ will be associated by a significant part of the relevant public with the meaning mentioned above and is normally distinctive in relation to the goods. The letter ‘K’ will be recognised as such; the verbal elements ‘KAI XUAN’ are meaningless; therefore, these elements – as they are not descriptive, allusive or otherwise weak in relation to the goods – will be normally distinctive too. The black square background, on the other hand, will be perceived as a label, and as being of a purely decorative nature. In addition, in any event, 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).
Therefore, while none of the verbal elements in the contested sign could be considered clearly more distinctive than other verbal elements, the elements ‘K’ and ‘VICTORY’, due to their size and position, are somewhat more eye-catching than the elements ‘KAI XUAN’ that are depicted in a much smaller size.
Visually, the signs coincide in the string of seven letters, that is, ‘VICTORY’ which forms the only element in the earlier mark. The signs differ in the additional letter ‘K’ and the verbal elements ‘KAI XUAN’ (the latter depicted in a smaller size) and in the minor stylisation of the letters in the contested mark, as well as in the black background of a decorative nature.
Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VICTORY’, present identically in both signs, as an independent and distinctive element. The pronunciation differs only in the sound of the initial letter ‘K’ and the verbal elements ‘KAI XUAN’ of the contested mark, if pronounced at all (due to their minor size) which has no counterpart in the earlier mark. Therefore, the signs are similar at least to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs will evoke the term ‘VICTORY’, the signs are conceptually similar to a high degree.
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
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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 goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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 covered are from the same or economically linked undertakings.
In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Account must be 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). ). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The contested sign comprises the earlier mark entirely. The goods are identical and similar (to various degrees) the signs will be associated with the same concept by a significant part of the relevant public. Furthermore, the signs are also visually highly similar and aurally similar to at least an average degree. The additional differences in the contested sign cannot counteract the similarities between the signs at issue, even where the attention will be high.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s International trade mark registration designating Portugal No 819 143.
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.
As regards the other countries designated by the opponent’s International trade mark registration No 819 143, these earlier marks cover the same or a narrower scope of goods, so that the outcome cannot be different with respect to the goods for which the opposition has already been rejected.
Furthermore, the opponent has also based its opposition on the following earlier trade mark:
International trade mark registration No 784 495 designating inter alia the European Union:
Since this mark is less similar to the contested mark and in addition covers a narrower scope of goods, the outcome cannot be different with respect to the goods for which the opposition has already been rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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
Gueorgui IVANOV | Edith Elisabeth VAN DEN EEDE | Michele M. BENEDETTI-ALOISI |
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.