OPPOSITION DIVISION
OPPOSITION No B 2 833 534
OVS S.p.A., Via Terraglio 17, 30174 Venezia Mestre (VE), Italy (opponent),
represented by Ufficio Brevetti Rapisardi S.R.L., Via Serbelloni, 12, 20122 Milano,
Italy (professional representative)
a g a i n s t
Guangzhou Jiarou Clothing Design CO. LTD., Room 1501, NO. 105, Hongguang
Street, Huangpu District, Guangzhou City, People’s Republic of China (applicant)
represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany
(professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 833 534 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 of European Union trade mark
application No 15 875 801 for the figurative mark namely against all the
goods in Class 25. The opposition is based on European Union trade mark
registration No 10 761 609 for the word mark ‘OVS’. The opponent invoked
Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
PRELIMINARY REMARK
The opponent has, in its notice of opposition, clearly and unambiguously indicated
the basis of the opposition as EUTM No 10 761 609, which is registered as a word
mark. In its observations dated 24 April 2017, however, the opponent refers to its
basis for the opposition as a figurative mark.
Since the identification of the mark which is the basis for the opposition is clear and
unambiguous the Opposition Division will base its decision on the word mark OVS’
Decision on Opposition No B 2 833 534 page: 2 of 6
and not on the mark the opponent refers to in its submissions of 24/04/2017. In any
event, the opponent may only rely on earlier rights identified within the three month
opposition period, which ended on 20/01/2017.
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: Clothing, footwear, headgear.
The contested goods are the following:
Class 25: Underclothes; sports bras; footwear; bonnets; socks; swim suits; yoga
pants; athletic uniforms; athletic clothing; clothing.
The contested goods clothing and footwear are included identically in the earlier
mark.
The earlier goods clothing include the contested underclothes; sports bras; socks;
swim suits; yoga pants; athletic uniforms; athletic clothing. These goods are therefore
identical.
The contested goods bonnets are covered by the earlier goods headgear and are
therefore identical.
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 contested goods are directed at the public at large.
The degree of attention is found to be average.
Decision on Opposition No B 2 833 534 page: 3 of 6
c) The signs
OVS
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 mark consists of the three letters OVS. The mark is not found to have any
commonly known meaning throughout the EU. The mark will not be perceived as a
word but as a combination of three letters pronounced individually. It is distinctive in
connection with the goods.
The opposed mark consists of a ‘dice shaped’ black background in which the five
letters ‘OSVYO’ are placed, ‘OSV’ on the top line and ‘YO’, in slightly bigger letters,
below. The mark would be read from left to right, and from the top to bottom, and
thus form the word ‘OSVYO’, which would in large parts of the territory be
pronounced as a single word. It could, however, in Spain and the UK, be pronounced
‘O-S-V YO’ since ‘yo’ is the Spanish word for ‘I’ and a colloquial word in the UK used
as a greeting. The overall distinctiveness of the contested mark is not affected by the
meaning of ‘YO’ in some parts of the EU and the sign is distinctive in connection with
the goods. The contested sign does not have any element which is clearly visually
dominant.
Visually, the marks have a different length, three versus five letters. The marks have
the letter ‘O’ in common as the starting letter and the subsequent letters ‘S’ and ‘V’
following, however, in a reversed order. The marks also differ in the stylisation and
black background of the contested sign. Taking into account the short length of the
opponent’s mark and the length of the contested mark, as well as its layout, the
Opposition Division finds that there is only similarity to a low degree.
Aurally, as indicated above the opponent’s mark will not be perceived as a single
word but rather as a combination of three letters pronounced individually and in the
sequence ‘O-V-S’. This is unlike the contested mark containing the word ‘OSVYO;
that will be pronounced as a word with three syllables or with four syllables as ‘O-S-
V-YO’. Although there could be differences in the way the marks are pronounced
throughout the EU, there are no languages where the two marks would be
pronounced in a way that could lead to significant similarity. In particular in Spain and
Decision on Opposition No B 2 833 534 page: 4 of 6
English-speaking countries, where ‘YO’ might be perceived as having a meaning, the
natural way of pronouncing the mark if it was not pronounced as one word, would be
O-S-V-YO. This leads to the conclusion that there is, at most, only a very low degree
of aural similarity between the marks for those consumers who spell out the first
three letters of the contested sign. For those who do not, there is even less aural
similarity.
Conceptually, although some members of the public in the relevant territory will
perceive a meaning in an element of the contested sign as explained above, the
other sign has no meaning in that territory. Since one of the signs will not be
associated with any meaning, the signs are not conceptually similar. For those
members of the public for whom neither of the signs has a meaning, 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.
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.
e) Global assessment, other arguments and conclusion
The marks have been found visually similar to a low degree and aurally similar to a
very low degree. There is no conceptual link between the marks. The goods at issue
are identical.
The earlier mark has a normal degree of distinctiveness. The contested goods are
directed at the public at large with an average degree of attention.
Even though the goods in question are identical this is outweighed by the low overall
similarity between the signs. The earlier mark is short, composed of three letters only,
thus inversion of two of these letters and the addition of two more letters results in
considerable differences on both the visual and aural levels. Taking into account that
the relevant public is normally observant, it must be concluded that there is no
likelihood of confusion. The marks will not be confused purely on the basis that they
both contain the letters ‘OVS/OSV’. As already explained above, the earlier mark is
most likely to be perceived as an acronym while consumers will tend to pronounce
the contested sign as one word. Even if the first three letters of the contested sign
are pronounced as an acronym by the consumers who understand the word ‘YO’, the
letters are not in the same order as the earlier mark.
Decision on Opposition No B 2 833 534 page: 5 of 6
Furthermore, it is important to note that 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). Therefore, the considerable visual differences between the
signs caused by for instance the length of the marks are particularly relevant when
assessing the likelihood of confusion between them. Considering the considerable
differences, which will be easily identified by the relevant public, it is unlikely that the
consumers will believe that goods at hand originate from the same undertaking or
from economically-related undertakings.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Lucinda CARNEY Torben Niels-henrik
Engholm KRISTENSEN
Jakub MROZOWSKI
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.
Decision on Opposition No B 2 833 534 page: 6 of 6
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.