OPPOSITION No B 2 698 416

VFB Lingerie, S.A., Rue Cesselin, nº 4-6, 75011 Paris, France (opponent), represented by Manresa Industrial Property, S.L., Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen Gaitewan Technology Co. Ltd., Bike Mansion, No. 9, Keyan Road, High-tech Park, Yuehai Street, Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 698 416 is upheld for all the contested goods, namely:

Class 25:        Pullovers; short-sleeve shirts; clothing; knitwear [clothing]; skirts; dresses; pants; underwear; dressing gowns; tights; combinations [clothing]; vests; beach clothes; pyjamas; underpants; petticoats; slips [undergarments]; teddies [undergarments]; panties.

2.        European Union trade mark application No 15 061 609 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 061 609, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 468 702. The opponent invoked Article 8(1)(b) EUTMR.

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:        Combinations (clothing), beach wear, underpants, all items of underwear, sportswear, run-resistant underwear, all knitwear, belts (clothing), corsets (underclothing), girdles and suspender belts, all items of clothing including boots, shoes and slippers.

The contested goods are the following:

Class 25:        Pullovers; short-sleeve shirts; clothing; knitwear [clothing]; skirts; dresses; pants; underwear; dressing gowns; tights; combinations [clothing]; vests; beach clothes; pyjamas; underpants; petticoats; slips [undergarments]; teddies [undergarments]; panties.

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 contested pullovers; short-sleeve shirts; clothing; knitwear [clothing]; skirts; dresses; pants; underwear; dressing gowns; tights; combinations [clothing]; vests; beach clothes; pyjamas; underpants; petticoats; slips [undergarments]; teddies [undergarments]; panties are all items of clothing. They are included in the broader category of the opponent’s all items of clothing including boots, shoes and slippers. Therefore, they are identical.

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

3. The signs

LOU
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘LOU’/‘Lou’, included in both signs, and the element ‘viva’ of the contested sign, are meaningful for the English-speaking part of the relevant public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier mark is a word sign consisting of a single verbal element, ‘LOU’.

The contested sign is a figurative sign composed of the word ‘Louviva’, which is written in black title case letters in a rather standard typeface.

The word ‘LOU’ of the earlier mark will be understood by the English-speaking public as both a male and a female name, usually short for Louis or Lewis, in the case of the male version, or Louise, in the case of the female version. Since this verbal element has no relation to the relevant goods, it has a normal degree of distinctiveness.

It can be reasonably assumed that the English-speaking part of the public will split the word ‘Louviva’ of the contested sign into two separate elements, ‘Lou’ and ‘viva’, both having a certain meaning for this part of the public. Such a dissection is confirmed by the Court, which has held that, although average consumers normally perceives a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Consequently, what has been stated above regarding the perception and distinctiveness of the word ‘LOU’ of the earlier mark is fully applicable in the case of the element ‘Lou’ of the contested sign. The last verbal element of the contested sign, ‘viva’, will be perceived as an exclamation referring to the long life of a specified person or thing (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/viva), and in connection with the preceding word ‘Lou’, which indicates the first name, it will be interpreted as ‘long life to Louis/Lewis/Louise’. The degree of distinctiveness of the element ‘viva’ as such is average, since there is no link to the relevant goods.

As they are composed of one verbal element, neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘LOU’/‘Lou’, which form the entire earlier mark and are present identically, in the same order, at the beginning of the contested sign. In this regard, it must be pointed out that 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.

However, the signs differ in the remaining letters/sounds of the contested sign, ‘viva’, which follow the coinciding letters/sounds, and visually they also differ in the slight stylisation of the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the meanings of the signs and their individual elements given above.

As outlined above, the English-speaking part of the public will perceive the earlier mark as referring to the name Louis/Lewis/Louise and the contested sign as an exclamation meaning ‘long life to Louis/Lewis/Louise’. Therefore, the signs are conceptually similar to an average degree.

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 relevant goods 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks 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 marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 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).

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).

As concluded above, the goods in question are identical and they target the public at large, which has an average degree of attention. Furthermore, the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are similar to an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. This is because they coincide in the letter sequence ‘LOU’/‘Lou’, which is the only element of the earlier mark and the first part of the contested sign. The differences between the signs, as outlined above, are not sufficient to counteract their similarities.

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain visual and aural differences between the two conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier marks, 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). It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking under the ‘LOU’ brand.

Based on an overall assessment, and taking into account the principle of imperfect recollection and the interdependence principle mentioned above, the Opposition Division concludes that there is a likelihood of confusion on the part of the English-speaking part of the public in the relevant territory, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 468 702. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested sign must be rejected for all the contested goods.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vít MAHELKA

Martin MITURA

Ric WASLEY

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.