OPPOSITION No B 2 696 824
Maria de los Angeles Rodriguez Leal, Avda. de la Constitución, 175, 03158 Catral,
Spain (opponent), represented by Molero Patentes y Marcas S.L., Paseo de la
Castellana, 173-Bajo Izq., 28046 Madrid, Spain (professional representative)
a g a i n s t
Omnam Nederland B.V., La Guardiaweg 5, 1043 DE Amsterdam, The Netherlands
(applicant), represented by Merkenbureau Knijff & Partners B.V.,
Leeuwenveldseweg 12, 1382 LX Weesp, TheNetherlands (professional
On 19/10/2017, the Opposition Division takes the following
1. Opposition No B 2 696 824 is upheld for all the contested goods, namely
Class 25: Clothing, footwear, headgear, shirts, pants, dresses, jackets, caps,
hats; all of the aforementioned excluding products designed to be
used in combat sports.
2. European Union trade mark application No 14 943 674 is rejected for all the
contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 14 943 674 for the word mark ‘VEN’,
namely against all the goods in Class 25. The opposition is based on European
Union trade mark registration No 13 844 469 for the figurative mark
. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 696 824 page: 2 of 5
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: Clothing, footwear, headgear, shirts, pants, dresses, jackets, caps,
hats; all of the aforementioned excluding products designed to be used in combat
Contested goods in Class 25
The contested clothing, footwear, headgear; all of the aforementioned excluding
products designed to be used in combat sports are included in the broad categories
of the opponent’s clothing, footwear, headgear. They are, therefore, identical.
The contested shirts, pants, dresses, jackets; all of the aforementioned excluding
products designed to be used in combat sports are included in the broad category of
the opponent’s clothing. They are, therefore, identical.
The contested caps, hats; all of the aforementioned excluding products designed to
be used in combat sports are included in the broad category of the opponent’s
headgear. They 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 goods found to be identical are directed at the public at
large. They are ordinary products, not particularly expensive and are purchased
The degree of attention is considered to be average.
Decision on Opposition No B 2 696 824 page: 3 of 5
c) 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 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.
As the verbal elements ‘WEN’ and ‘VEN’ are meaningless in, for example, territories
where Hungarian and Estonian are spoken and understood, the Opposition Division
finds it appropriate to focus the comparison of the signs on the Hungarian and
Estonian-speaking parts of the public.
The earlier sign is a figurative mark, representing the verbal element ‘WEN’ in
stylized capital letters and a slightly larger letter ‘W’. The figurative representation of
the earlier sign has a purely decorative nature and is common for the goods in
question. Therefore, it has a limited impact in the overall impression. The earlier sign
has no element that is more dominant than other elements.
The contested sign is a word mark, ‘VEN’. As it has no meaning for the relevant
public, it enjoys a normal distinctive character.
Visually, the signs coincide in the sequence of the letters ‘E-N’. However, they differ
in the first letters which are respectively ‘W’ and ‘V’. They also differ in the figurative
representation of the earlier sign.
Despite being different letters of the alphabet, ‘V’ and ‘W’ share a visual similarity as
the letter ‘W’ represents two conjointly written letters ‘V’.
Considering the above, the signs are visually similar to an above average degree.
Aurally, the pronunciation of the signs is identical because in Hungarian and
Estonian there is no difference in the pronunciation of the letters ‘W’ and ‘V’. Also the
letters ‘E’ and ‘N’ are identically contained in the same sequence in both signs. There
are no other verbal elements to set the signs aurally apart.
Decision on Opposition No B 2 696 824 page: 4 of 5
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. 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
e) Global assessment, other arguments and conclusion
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.
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).
The goods are identical and the signs are visually similar to an above average
degree and aurally identical.
The applicant claims that since the signs consist only of three letters, it will be easier
for the relevant public to perceive all their single elements, resulting that the small
differences between them may lead to a different overall impression.
The marks at issue are short signs, indeed, and this fact has to be considered when
evaluating a likelihood of confusion. However, the differences between them are not
sufficient to outweigh the similarities. Account is also taken of the fact that the
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). In respect of the goods in
question which are frequently purchased and ordinary goods and consumers will pay
just an average degree of attention when purchasing them, it is not likely that the
relevant consumers will recall the differences between the marks despite the fact that
they are short signs.
Decision on Opposition No B 2 696 824 page: 5 of 5
Considering all the above, the significant similarities between the signs and the
identity of the goods in question are likely to lead the relevant public to the perception
that these goods come from the same or economically linked undertakings. Hence,
there is a likelihood of confusion on the part of the Hungarian and Estonian-speaking
parts of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 13 844 469. It follows that the contested trade mark
must be rejected for all the contested goods.
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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Sigrid DICKMANNS Alexandra APOSTOLAKIS Julia SCHRADER
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.
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.