OPPOSITION No B 2 504 911

Grendene, S/A, Av. Pimentel Gomes, 214, Bairro: Expectativa Sobral, CE 62040-50, Brasil (opponent), represented by Rafael Ortega Pérez, Diego A. Montaude, 7, 1º Of 11, 35001 Las Palmas de Gran Canaria, Spain (professional representative)

a g a i n s t

Fernanda Brandao, Wichertstraße 47, 10439 Berlin, Germany (holder), represented by Lichte Rechtsanwälte, Kaiser-Wilhelm-Str. 93, 20355 Hamburg, Germany (professional representative).

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 504 911 is partially upheld, namely for the following contested goods:

Class 25:        Beach sandals, slippers, soccer shoes, gym shoes, shoes, ankle boots, slippers, wooden shoes, slippers, sandals, boots, shoes, included in this class; footwear, as far as included in this class, boots, sport shoes, boots, as far as included in this class, cloth shoes, studs for football shoes, beach shoes. 

2.        International registration No 1 216 767 is refused protection in respect of the European Union for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 216 767, namely against some of the goods in Class 25. The opposition is based on European Union trade mark registration No 2 170 025. The opponent invoked Article 8(1)(a) and (b) EUTMR.

On 22/11/2016, the Opposition Division rendered a decision that resulted in the rejection of the opposition pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR on the grounds that the evidence submitted by the opponent was insufficient to prove that the earlier trade mark was genuinely used as registered, within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The decision was appealed and the Board of Appeal decided in case R 138/2017-5 on 25/04/2017. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board found that the distinctiveness of the opponent’s mark derives largely from the word ‘GINGA’ and that its figurative features have only a secondary role in the overall impression that the sign makes on consumers. It also pointed out that the representation of that word element has a relatively marginal visual impact, that it does not dominate the mark and that it does not have any inherent distinctive character. Finally, the Board also found that, of the items of evidence filed, the product catalogue, which bears no date, has a fairly negligible probative value, since it cannot be ascertained, without making mere assumptions, that this document was indeed distributed in the relevant territory during the relevant period of time, nor does it demonstrate any clear connection between the products depicted therein and the items in the invoices submitted.

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 holder 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.

As regards international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR for the purposes of establishing the five-year period of use obligation for the earlier mark is considered to be six months after the first republication of the international registration, that is the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR). The opponent’s mark is under use obligation, if at the beginning of the opposition period, namely six months after the date of the first republication of the IR, it had been registered for more than five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 2 170 025 ‘’.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date (first republication of the contested IR + six months).

The relevant date (first republication of the contested IR + six months) is 26/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/03/2010 to 25/03/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25:        Footwear.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 24/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/04/2016 to submit evidence of use of the earlier trade mark. On 28/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence filed is the following:

• Dozens of pages of invoices issued by the opponent, based in Brazil, to customers in Bulgaria, Greece, Hungary, Malta and the Netherlands, with dates ranging from 12/01/2012 to 10/02/2015. The invoices refer to plastic sandals or slippers. The import figures range from several thousands to several tens of thousands of US dollars per year. The numbers of products shipped range from 6 000 to 15 000 per year. The invoices demonstrate use of the verbal element ‘GINGA’ in conjunction with other terms, for example ‘GINGA BRASIL AD’, ‘GINGA PRINTING AD EXP FF’, ‘GINGA PRINTING II FEM’, ‘GINGA PRINTING II AD’, ‘GINGA ARENA V AD’ and ‘GINGA ARENA V KIDS’.

• A document that appears to be a product catalogue, or an excerpt from one, without, however, any indication of its date or origin. The evidence consists of eight pages containing photographs of various sandals and slippers and information about colours and sizes. On each of the eight pages – between the rows ‘COLOUR’ and ‘SIZES’ – there is a product code followed by the verbal element ‘GINGA’ in conjunction with another term as follows:

–        81512-GINGA TRACK II KIDS

–        80881-GINGA SOFT FEM

–        81506-GINGA SCORE II AD

–        80879-GINGA SCORE AD FF

–        80373-GINGA PAPEETE ATOMIC KIDS

–        80890-GINGA NEW WAVE AD

–        81514-GINGA HIMALAIA V BABY

–        81510-GINGA GLAMOUR FEM.

Furthermore, on each of the eight pages – between the rows ‘SIZES’ and ‘ASSORTMENTS’ – the word ‘GINGA’ is displayed as follows: .

In line with the decision of the Board of Appeal, the Opposition Division will focus on the analysis of the invoices submitted, which show that the place of use covers, inter alia, Hungary, Malta, Bulgaria, the Netherlands and Greece. This can be inferred from the addresses for shipment and discharge of the goods. Therefore, the evidence relates to a substantial part of the relevant territory.

All the invoices submitted are dated within the relevant period and cover a period ranging from 2012 to 2015. Consequently, use is considered to have been shown for a significant part of the relevant period.

The invoices demonstrate sales of a significant quantity of products, that is, tens of thousands of ‘GINGA’ products, at a total value of tens of thousands of US dollars over the period 2012-2015. Based on this, the Opposition Division concludes that the invoices indicate sufficient commercial volume. Furthermore, taking into account the territorial extent of use, its duration and its frequency, as demonstrated by the invoices, as well as the nature of the relevant goods, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

The evidence clearly shows the use of the sign as a trade mark. Furthermore, in the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence submitted shows the use of the earlier mark as a trade mark in relation to the relevant goods. Furthermore, with regard to the nature of use of the opponent’s mark and, in particular, its use in a form different from that in which it was registered, it must first be pointed out that the purpose of Article 15 EUTMR is to allow its 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).

In the present case, the evidence submitted contains the word ‘GINGA’, alone or in combination with other word elements, whereas the opponent’s mark is registered in the following form: . While the registered form of the opponent’s mark contains additional figurative elements, namely stick figures that make up the word ‘GINGA’, it is still the word as such that is the most distinctive element in the mark. This is because it lacks any meaning in relation to the relevant goods, and the figurative features merely reinforce this distinctiveness and do not alter it. When a mark has an inherently distinctive character, it may be less influenced by changes. This applies to the present case, in which the figurative elements are decorative and will have much less impact on the consumer’s perception of the mark than the word element. In summary, it must be concluded that the evidence filed shows use of the opponent’s mark even though it is registered as a figurative mark, since the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered (18/07/2013, C-252/12, Specsavers, EU:C:2013:497, § 31).

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, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR in relation to various types of footwear.

According to case-law, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use for plastic sandals and slippers, which belong to the following category in the specification: footwear. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for footwear.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory and for the goods for which it is registered.

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 on which the opposition is based are the following:

Class 25: Footwear.

The contested goods are the following:

Class 25: Beach sandals, slippers (listed three times), soccer shoes, gym shoes, shoes, ankle boots, wooden shoes, petticoats, sandals, boots (listed twice), shoes, included in this class; shoe frames, shoe soles, footwear, as far as included in this class, sport shoes, boots, as far as included in this class, boot tops, cloth shoes, studs for football shoes, beach shoes.

 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 beach sandals, slippers, soccer shoes, gym shoes, shoes, ankle boots, wooden shoes, sandals, boots, shoes, included in this class; footwear, as far as included in this class, sport shoes, boots, as far as included in this class, cloth shoes, beach shoes are all various types of footwear, and are therefore included in the opponent’s broad category of footwear. Therefore, these goods are identical.

The contested studs for football shoes are essential parts of football shoes, which belong to the opponent’s broad category of footwear. This means that they frequently have the same manufacturers, distribution channels and target public and that there is a high degree of complementarity between them. Therefore, these goods are similar.

The contested shoe frames, shoe soles, boot tops are parts of footwear that are used in the manufacturing process. Their nature and method of use are very different from those of the opponent’s footwear: while the opponent’s goods are finished products that consumers wear, the contested goods are specific components used in manufacturing. This means that their target public and distribution channels are very different, since the opponent’s goods are sold to the general public and widely available in shops and retail outlets, whereas the contested goods are sold to shoe manufacturers through specific channels. In summary, these goods are dissimilar.

The contested petticoats are a special type of clothing to be worn as an undergarment, usually for warmth. As such, they have nothing in common with the opponent’s footwear, since they have different natures, distribution channels and commercial origins. In addition, they are neither complementary nor in competition. In summary, these goods are dissimilar.

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

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 holder has claimed that ginga is a capoeira move, widely publicised by the holder, and that this word is of limited distinctiveness. The Opposition Division notes that capoeira is a Brazilian martial art that combines elements of dance. While it may be practised sporadically in some parts of the relevant territory, it has not gained such popularity or recognition that the name of one of its movements would be known to the general public. Furthermore, the holder’s submissions intended to demonstrate her own popularity are irrelevant to the present proceedings, partly because the vast majority of these submissions are in German, that is, not in the language of the proceedings, and partly because, even if the Opposition Division were to consider this popularity proven, it would not change the fact that the holder’s name is significantly smaller than the other elements in the contested sign. Furthermore, even if part of the relevant public were to look at the products very closely and, thus, perceive the element ‘by FERNANDA BRANDAO’, this part of the public would nonetheless perceive this text as indicating the person behind the trade mark ‘Ginga’. As the name is not the dominant element of the contested sign, consumers are likely to focus more on the element that would be seen as identifying the specific product line, rather than on the element that would be perceived (because it is preceded by ‘by’) as identifying the designer who created the product line or is in some other way responsible for it. In summary, the holder’s arguments cannot change the conclusions in the following paragraphs with regard to the dominant parts of the contested sign and the distinctiveness of the signs’ coinciding element.

The earlier mark includes the word ‘GINGA’ with the letters formed from what appear to be stick figures doing various physical exercises. It is likely that these figures would be clearly perceptible only on very close inspection and that, from a distance, consumers would simply see the mark as a word. Since this word lacks any meaning, it is distinctive in relation to the relevant goods.

The contested sign consists of the word ‘GINGA’ in upper case letters and, beneath it, the text ‘by FERNANDA BRANDAO’ in much smaller lettering. At the top of the mark there is a device element of a circle containing black and white waves. Of these elements, it is the word ‘GINGA’ and the device element that have dominant roles, given their size. The rest of the word elements, depicted in a much smaller size, will be difficult to make out, and even consumers who actually perceive them will interpret them as only an indication that a person named Fernanda Brandao is responsible for the creation, design or manufacture of the goods in question. Therefore, the distinctiveness of that element is normal, while the device is not particularly fanciful.

Visually, the signs coincide in the word ‘GINGA’ and they differ in the rest of their figurative and word elements. However, as explained above, the differing elements of the contested sign are of less significance, since consumers will pay less attention to the device, and they may disregard or overlook the remaining text, which is hardly perceptible. However, the coinciding word element is depicted in different manners, given its rather unusual depiction in the earlier mark. The impact of this difference is, to some extent, counteracted by the fact that it becomes perceptible only on closer inspection, and the impact diminishes as the distance grows between the mark and the person looking at it. Moreover, 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; decisions of 19/12/2011, R 233/2011 4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Based on all these findings, it must be concluded that the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛GINGA’, present identically in both signs. The differing element, namely ‛by FERNANDA BRANDAO’, of the contested mark will go unnoticed, given its extremely small size, and will, therefore, not be pronounced. Taking these factors into account, it must be concluded that consumers would refer to the signs by their coinciding, distinctive element, which means that the signs are aurally identical.

Conceptually, reference is made to the above findings, in particular to those explaining why consumers would essentially perceive the earlier sign as a word and why the contested sign’s additional words would go unnoticed and would, therefore, have no impact on the conceptual perception of the sign. Since the contested sign’s dominant and, in fact, only clearly perceptible element coincides with the earlier sign’s sole word, and since this word lacks any meaning in the relevant territory, no conceptual comparison is possible and 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.

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 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.

5. Global assessment and conclusion

The goods are identical or similar and the signs are aurally identical and visually similar, while their relevant elements lack any concept.

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, the differences between the signs do not counteract the similarity resulting from the coinciding, distinctive word ‘GINGA’. Consumers will readily assume that the identical or similar goods come from the same undertaking or economically linked undertakings. This is all the more likely since the differing word elements of the contested sign, if perceived at all, are of such a nature as to lead customers to believe that the contested sign is used as a sub-brand of the opponent’s mark.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the Opposition Division finds that the opposition is partly well founded on the basis of the opponent’s European Union 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 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.

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

Solveiga BIEZA

Ferenc GAZDA

Zuzanna STOJKOWICZ

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.