OPPOSITION No B 2 648 171

GGZ S.r.l., Via Tezzon, 6/a, 35020 Pozzonovo (PD), Italy (opponent), represented by Ufficio Veneto Brevetti, Via Sorio, 116, 35141 Padova, Italy (professional representative)

a g a i n s t

Ernesto Dolani S.r.l., Via Fratte 7048, 63811 Sant'Elpidio a Mare (FM), Italy (holder), represented by Morison Ac S.r.l., Via G. Agnelli 22/24, 63900 Fermo, Italy (professional representative).

On 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 648 171 is partially upheld, namely for the following contested goods:

Class 18         Key bags; bags; purses; beach bags; chain mesh purses; carriers for dresses; card cases [notecases]; pocket wallets; coin purses; hand bags; gym bags; attaché cases; rucksacks. 

Class 25         Dresses; bandanas [neckerchiefs]; berets; underwear; garters; footwear; stockings; socks; shirts; headgear; hats; jackets; belts [clothing]; suits; swimwear; ties; jackets [clothing]; blousons; skirts; gloves; mackintoshes; leg warmers; jumpers; hosiery; pullovers; parkas; pyjamas; ponchos; sandals; beach shoes; shawls; sashes for wear; ankle boots; tee-shirts; combinations [clothing]; wooden shoes. 

2.        International registration No 1 247 372 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 247 372 for the figurative mark  The opposition is based on European trade mark registration No 4 916 912 for the figurative mark . 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 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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say 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, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark No 4 916 912.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 22/11/2015. 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 22/11/2010 to 21/11/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 18         Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25         Clothing, footwear, headgear.

According to Rule 22(3) EUTMIR, the evidence of use must 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 07/010/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/12/2016 to submit evidence of use of the earlier trade mark. This deadline was extended until 12/02/2017. On 10/02/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A selection of sales invoices of the years 2010, 2011, 2012, 2013, 2014 for articles of clothing, such as pants, skirts, jackets, coats, dresses, ponchos, shirts, corselets, issued by the opponent and addressed to recipients in Italy, Belgium, Germany, France, The Netherlands, Portugal and the United Kingdom, together with product details showing article descriptions, article numbers, and depictions of the articles. The documents are in Italian and English language. They are accompanied by an English translation of the main elements of the invoices. They invoices do not show the mark but bear article codes that correspond to those shown in the attached product specifications. Almost all of these product specifications are branded with the word ‘ViCOLO’ in the top left corner and show the indication ‘VICOLO’ in the section ‘marchio’ of the specification (which means ‘mark’, as it can be inferred from the overall structure of the document).

• A sworn declaration, by Mr Giancarlo Zanchi, chairman of the opponent, confirming that the specified product codes correspond to ‘VICOLO’ branded articles.

• Invoices for the realization of different kinds of ‘VICOLO’ tags and labels: six invoices issued in the years from 2012 to 2014, accompanied by an English translation of their main aspects.

• Product details of the aforesaid tags showing the sign ‘VICOLO’, for the ‘Spring Summer (SS) 2012 collection’ and the ‘Autumn Winter (AW) 2012/2013 collection’, accompanied by an English translation.

• Catalogues ‘Autumn Winter (AW) 2013-2014’ and ‘Spring Summer (SS) 2014’ showing a selection of clothes, worn by a female model (according to the opponent the Italian model and famous fashion blogger Chiara Biasi); the sign VICOLO appears in conjunction with the word ‘NORTHLAND’.

The above listed documents show that the place of use is the European Union, This can be inferred from addresses on the invoices (namely in Italy, Belgium, Germany, France, The Netherlands, Portugal and the United Kingdom) and from the language (English and Italian) on other pieces of evidence, such as the catalogues. Therefore, the evidence relates to the relevant territory.

Almost all of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is very close in time to the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices for articles of clothing in conjunction with the attached product specifications of ‘ViCOLO’ clothing articles and the invoices and specifications for ‘ViCOLO’ tags and labels, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Although the evidence does not indicate a particularly high commercial volume it shows constant use of the EUTM in several member states, as already set out above.  Also use of the mark need not be quantitatively significant for it to be deemed genuine.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

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).

The invoices for clothing in conjunction with the attached product specifications of ‘ViCOLO’ clothing articles and the invoices and specifications for ‘ViCOLO’ tags and labels allow the conclusion that the opponent has used the mark as registered.

The fact that the mark appears as the words ‘ViCOLO’ and ‘VICOLO’ does not alter the distinctive character of the mark and is, therefore, considered to be proper use of this mark.

The fact that on part of the evidence, i.e. the catalogues, the word ‘‘VICOLO’ appears alongside another word (‘Northland’) does not alter this finding.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision 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 only for goods such as pants, skirts, jackets, coats, dresses, ponchos, shirts, corselets, all belonging to the following category in the specification: clothing. 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 clothing.

No use has been shown for any of the other registered goods, namely leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery in Class 18 and footwear, headgear in Class 25.

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:        Clothing.

The contested goods are the following:

Class 18         Key bags; vanity cases, not fitted; valises; bags; purses; beach bags; travelling sets [leatherware]; chain mesh purses; carriers for dresses; animal skins; card cases [notecases]; pocket wallets; coin purses; hand bags; gym bags; trunks; attaché cases; rucksacks. 

Class 25         Dresses; bandanas [neckerchiefs]; berets; underwear; garters; footwear; stockings; socks; shirts; headgear; hats; jackets; belts [clothing]; suits; swimwear; ties; jackets [clothing]; blousons; skirts; gloves; mackintoshes; leg warmers; jumpers; hosiery; pullovers; parkas; pyjamas; ponchos; sandals; beach shoes; shawls; sashes for wear; ankle boots; tee-shirts; combinations [clothing]; wooden 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.

Contested goods in Class 18

The  contested key bags; bags; purses; beach bags; chain mesh purses; carriers for dresses; card cases [notecases]; pocket wallets; coin purses; hand bags; gym bags; attaché cases; rucksacks are similar to the opponent´s clothing as they can coincide in producer, end user and distribution channels.

The contested animal skins; valises; travelling sets [leatherware];  trunks; vanity cases, not fitted are dissimilar to the opponent´s clothing. They differ in producer, relevant public, distribution channels, method of use and are neither in competition nor complementary to each other.

Contested goods Class 25

The contested dresses; bandanas [neckerchiefs]; underwear; garters; stockings; socks; shirts; jackets; belts [clothing]; suits; swimwear; ties; jackets [clothing]; blousons; skirts; gloves; mackintoshes; leg warmers; jumpers; hosiery; pullovers; parkas; pyjamas; ponchos; shawls; sashes for wear;; tee-shirts; combinations [clothing] are included in the broad category of the opponent’s clothing.  Therefore, they are identical.

The contested berets; headgear; hats are similar to the opponent´s clothing as they have the same purpose and can coincide in producer, end user and distribution channels.

The contested footwear; sandals; beach shoes; ankle boots; wooden shoes are similar to the opponent´s clothing as they have the same purpose and they can coincide in producer, end user and distribution channels.

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 will be 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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word element ‘VICOLO’, present in both signs, is meaningful in certain territories, for example, in those countries where Italian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public such as in Italy.

The word element ‘VICOLO’ will be understood as meaning ‘alley’ by the relevant public (Collins Italian-English Dictionary: vicolo (ˈvikolo) masculine noun "alley"). The holder’s argument that ‘VICOLO’ is non-distinctive as ‘google results when searching only return geographical results’ cannot be followed. Whilst it is indeed possible for geographical indications to be non-distinctive as they may describe the origin of goods (e.g. ‘Tuscany’ for wine) the same cannot be said of the word ‘VICOLO’. In its meaning ‘alley’ it is obviously neither a geographical indication in the aforementioned sense nor would it be seen as otherwise descriptive, allusive or weak for the relevant goods. Therefore, it is distinctive.

The element ‘8’ of the contested sign will be associated with the concept of said number. As, from the perspective of the relevant public, it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Both signs are composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature (two additional dots on the letter ‘i’ of the earlier mark; dots in the letters ‘O’ and the number 8 of the contested sign; the respective typeface of the signs).

Therefore, their verbal elements are more distinctive than their figurative elements.

The verbal elements ‘ViCOLO’ and ‘VICOLO8’ respectively are also the dominant elements of the signs as they are the most eye-catching.

Visually, the signs coincide in the distinctive word ‘VICOLO’ present in both signs. The signs differ in the additional distinctive number ‘8’ of the contested sign and their respective stylization, which is however less distinctive.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VICOLO’, present identically in both signs. The pronunciation differs in in the sound of the number ‘8’ (pronounced ‘otto’ in Italian) of the contested mark, which has no counterpart in the earlier sign. The figurative elements have no impact on the aural comparison.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘VICOLO’, included in both signs, will be associated with the meaning explained above. Therefore, the signs are conceptually highly similar.

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, 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.

The distinctive verbal element ‘VICOLO’ of the earlier mark is entirely reproduced within the contested sign (albeit with a slightly different stylization) and, on account of this element, the signs are also conceptually highly similar. The additional number ‘8’ of the contested signs and the minor differences in the graphical representation of the signs are not sufficient to safely exclude a likelihood of confusion. Identical and similar goods bearing the signs may be perceived as having the same commercial origin

Indeed, 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).

In its observations, the holder argues that the earlier trade mark has a low distinctive character, claiming that there are many trade marks that include the word ‘VICOLO’ In support of its argument the holder refers to a European Union trade mark registration.

The Opposition Division notes that the existence of trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘VICOLO’. Under these circumstances, the holder’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union/ trade mark registration. 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 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

Lars HELBERT

Tobias KLEE

Martin EBERL

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.