OPPOSITION No B 2 663 717

Aktieselskabet af 21. november 2001, Fredskovvej 5, 7330 Brande, Denmark (opponent), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000 Århus C, Denmark (professional representative)

a g a i n s t

Vila Nova Carneiro, S.A., Rua Da Mabor, 104, 4760-813 Lousado, Portugal (applicant), represented by Garrigues IP, Unipessoal Lda., Avenida da República, 25 – 1º, 1050-186 Lisboa, Portugal (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 663 717 is partially upheld, namely for the following contested goods:

Class 18:        Luggage; bags, wallets and other carriers.

Class 25:        Clothing; footwear; hats.

2.        European Union trade mark application No 14 817 936 is rejected 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 European Union trade mark application No 14 817 936, ‘VILANOVA’, namely against all the goods and services in Classes 18, 25 and 35. The opposition is based on, inter alia, European Union trade mark registration No 8 291 338, ‘VILA CLOTHES’. 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 applicant 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.

The opposition is based on more than one earlier trade mark. The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark No 8 291 338 and Danish trade mark No VR 1997 01726. The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The Opposition Division finds it appropriate to first examine the evidence of use in relation to the opponent’s European Union trade mark No 8 291 338.

The contested application was published on 30/11/2015. 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 30/11/2010 to 29/11/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services 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.

Class 35:        The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods through retail stores, wholesale outlets or means of electronic media, namely: spectacles, spectacle frames, tinted glasses, sunglasses, spectacle frames, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, 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 29/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/12/2016 to submit evidence of use of the earlier trade marks. On 02/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex 3:        an extract from the opponent’s ‘Brandbook’ of 2013 providing general information regarding the trade mark ‘VILA’ and containing chapters such as ‘VILA INTRO AND HISTORY’, in which the mark  appears at the bottom of a page, ‘THE VILA UNIVERSE’, ‘VILA SHOP UNIVERSE’ and ‘FACT SHEET’, which states that VILA CLOTHES was established in 1994 and that, today, it has more than 200 stores and more than 1 900 wholesale customers.

Annex 4:        two tables (deriving from the opponent) showing the marketing costs (in euros) for ‘VILA CLOTHES’ in France and worldwide for the financial years 2010/11, 2011/12, 2012/13, 2013/14, 2014/15 and 2015/16 and for ‘VILA’ in the United Kingdom and worldwide for the financial years 2011/12, 2012/13, 2013/14, 2014/15 and 2015/16.

Annex 5:        two tables (deriving from the opponent) showing the quantity of ‘VILA CLOTHES’ products invoiced to France and worldwide for the financial years 2010/11, 2011/12, 2012/13, 2013/14, 2014/15 and 2015/16 and ‘VILA’ products invoiced to the United Kingdom and worldwide for the financial years 2002/03, 2003/04, 2004/05, 2005/06, 2006/07, 2007/08, 2008/09, 2009/10, 2010/11, 2011/12, 2012/13, 2013/14, 2014/15 and 2015/16.

Annex 6:        26 invoices issued within the period 2012-2015 (11 invoices from 2012, 7 invoices from 2013, 5 invoices from 2014 and 3 invoices from 2015) to different consumers in Belgium, Denmark, Finland, France, Germany, Spain, Sweden and Switzerland (in euros and Danish kroner), for different kinds of clothing (and also for some footwear, bags and hats), with all invoices bearing the mark  at the top.

Annex 7:        a list of ‘VILA’ and partner company stores in different cities in Denmark, Finland, Germany, Iceland, Ireland, the Netherlands, Norway, Sweden and the United Kingdom for the period 30/11/2010-29/11/2015 (information deriving from the opponent).

Annex 8:        four examples of clothing store fronts that show the mark . The pictures are presented together with a ‘Properties’ table, indicating the date when each picture was created, namely on 12/11/2015, 22/04/2015, 04/12/2014 and 07/05/2011.

Annex 9:        screenshots from web.archive.org (Wayback Machine) showing three extracts dated 2012, one extract dated 2013, three extracts dated 2014 and one extract dated 2015 from www.vila.com, bearing either the indication ‘VILA FASHION’ or the mark , offering different clothes for sale and including related information.

Annex 11:        copies of catalogues with the mark  on the cover page containing pictures of various clothes (with product names, ID numbers, size scales, composition indications and prices in Danish kroner, Norwegian kroner, Swedish kronor, euros, pounds sterling and Swiss francs), namely the collections of Pre-Spring 2015 (December 2014/January 2015/February 2015), Autumn/Winter 2014, June/July/August 2014, Spring/Summer 2014, March/April/May 2014, December 2013/January 2014/February 2014, Autumn Express 2013, New Year Express 2012, Autumn Express 2012, Fall Tour 2012, Pre-Autumn Express 2012, April/May/June 2012, New Year Express 2011, Fall Tour 2011, Spring Express 2011, New Year Express 2010, Autumn Express 2010 and Fall Tour 2010 for clothes, including footwear, headgear and bags.

Annex 12:        eight examples of flyers bearing the mark , with pictures of clothing, footwear and bags (some indicating specific products and their prices). Five of them were submitted together with a ‘Properties’ table indicating the date when the picture was created, namely on 18/09/2012, 06/09/2012, 30/08/2012, 09/03/2012 and 25/01/2012.

Annex 13:        various screenshots from third-party web shops (dated 2013-2014), such as www.monshowroom.com, www.wehkamp.nl, www.zalando.de and www.asos.com, offering for sale clothes and footwear of the ‘VILA’ brand.

Article 42 EUTMR requires proof of genuine use of the earlier mark. In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered, since some of the evidence submitted is either merely internal information derived from the opponent or simple advertising material and therefore does not provide enough information about where or to whom the goods in question were sold and where they were available for purchase, namely in which parts of the relevant territory.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As regards the probative value of the extract from the opponent’s ‘Brandbook’ of 2013 (Annex 3), the tables showing marketing costs (Annex 4) and the tables showing the quantity of ‘VILA CLOTHES’ and ‘VILA’ products invoiced (Annex 5), information deriving from the interested parties themselves or their employees is generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such evidence does not have any probative value at all. Therefore, it is necessary to assess the remaining evidence to see whether or not the content of the abovementioned evidence is supported by the other items of evidence; the final outcome depends on the overall assessment of the evidence in the particular case.

Place of use

Annexes 3, 4, 5, 6, 7, 11 and 13 demonstrate that the opponent used the marks ‘VILA CLOTHES’ and ‘VILA’ in Denmark, Finland, France, Germany, Sweden, the United Kingdom and other countries of the European Union. This can be inferred from the addresses on the invoices (Annex 6), the domain names (Annex 13), the currencies mentioned (e.g. Danish kroner, Swedish kronor, euros, pounds sterling) (Annex 11) and the languages of the documents (English and Danish). Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the period 2010-2015 and demonstrates that the mark ‘VILA CLOTHES’ was used throughout the relevant period, namely from 30/11/2010 to 29/11/2015.

Extent of use

In view of the market situation in the particular industry or trade concerned, it must be evaluated whether the material submitted permits the conclusion that the owner has seriously tried to acquire a commercial position in the relevant market. In this regard, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The tables showing the marketing costs in the period 2010-2016 for ‘VILA CLOTHES’ products in France and worldwide and for ‘VILA’ products in the United Kingdom and worldwide (Annex 4) and the tables showing the quantity in the period 2010-2016 of ‘VILA CLOTHES’ products invoiced to France and worldwide and of ‘VILA’ products invoiced to the United Kingdom and worldwide (Annex 5) – when considered together with the information provided in the ‘Brandbook’ of 2013 (Annex 3), the copies of 26 invoices issued to different consumers in Belgium, Denmark, Finland, France, Germany, Spain and Sweden in 2012, 2013, 2014 and 2015 (Annex 5), the list of ‘VILA’ and partner company stores in different cities in Denmark, Finland, Germany, Ireland, the Netherlands, Sweden and the United Kingdom for the period 30/11/2010-29/11/2015 (Annex 7), the examples of clothing store fronts dated 2011, 2014 and 2015 (Annex 8), the screenshots from web.archive.org (Wayback Machine) showing extracts dated 2012, 2013, 2014 and 2015 from www.vila.com (Annex 9), the copies of catalogues of 2010-2015 presenting and offering for sale clothes, footwear, headgear and bags under the mark ‘VILA CLOTHES’ (Annex 11) and the screenshots from third-party web shops offering for sale ‘VILA’ clothes, dated 2013-2014 (Annex 13) – show that the marks ‘VILA’ and ‘VILA CLOTHES’ were continuously used by the opponent during the relevant period in the field of clothing (including selling) and thus provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark.

In view of the above, it can be clearly seen that that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark ‘VILA CLOTHES’ within the relevant period. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in the European Union.

Nature of use

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 in the annexes listed above demonstrates that the earlier sign was used in such a way as to establish a clear link between the goods and services and the undertaking responsible for their marketing. Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

As can be seen from the evidence, the mark in question has been used as registered, namely as ‘VILA CLOTHES’, also as the word ‘VILA’ or as the figurative mark . In the case of the use of the word mark ‘VILA’, the omitted element ‘CLOTHES’ is directly descriptive of the relevant goods, such as clothing (including footwear and headgear, which are directly related to clothing), and is weak for bags, which are often sold as accessories to clothing. In the case of the use of the figurative mark , the minimal stylisation, the depiction of the mark over two lines and the small size of the descriptive element ‘CLOTHES’ all constitute variations of the mark ‘VILA CLOTHES’, which, along with the abovementioned omission from the word mark, are not of such a nature as to alter its distinctive character, since the most distinctive element ‘VILA’ in both cases remains unchanged. Therefore, the Opposition Division considers that these differences do not alter the distinctive character of the mark in the form in which it is registered.

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. The evidence submitted is also sufficient to demonstrate that the mark was used publicly and outwardly.

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).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services 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 earlier mark was registered for wide categories of goods in Class 18; however, the evidence proves genuine use only for bags. These goods can be considered to form the objective sub-category goods made of leather and imitation of leather and not included in other classes, namely, bags. In relation to the services in Class 35, the evidence shows genuine use of the mark only for selling goods such as clothing, footwear, headgear and bags.

Consequently, the Opposition Division considers that the evidence shows genuine use of the trade mark for the following goods and services:

Class 18:        Goods made of leather and imitation of leather and not included in other classes, namely, bags.

Class 25:        Clothing, footwear, headgear.

Class 35:        The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods through retail stores, wholesale outlets or means of electronic media, namely: clothing, footwear, headgear and goods made of leather and imitation of leather, namely, bags.

Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark No 8 8291 338, ‘VILA CLOTHES’, the use of which has already been assessed and proven.

1. The goods and services

The goods and services on which the opposition is based and for which use has been proven are the following:

Class 18:        Goods made of leather and imitation of leather and not included in other classes, namely, bags.

Class 25:        Clothing, footwear, headgear.

Class 35:        The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods through retail stores, wholesale outlets or means of electronic media, namely: clothing, footwear, headgear and goods made of leather and imitation of leather, namely, bags.

The contested goods and services are the following:

Class 18:        Animal skins; imitation leather; luggage, bags, wallets and other carriers; umbrellas and parasols.

Class 25:        Clothing; footwear; hats.

Class 35:        Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; business administration services for processing sales made on the internet; commercial management; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Bags are identically contained in both lists of goods (albeit with different wording).

The contested luggage overlaps with the opponent’s bags. Therefore, they are identical.

The contested wallets and other carriers are highly similar to the opponent’s bags, as these goods have the same nature and purpose and can coincide in their distribution channels, manufacturer and relevant public.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; the contested parasols are light umbrellas carried for protection from the sun. The purpose of these contested goods is different from those of the opponent’s goods in Classes 18 and 25, which are bags and articles of clothing. Even though their relevant publics may coincide to some extent, the natures and methods of use of the contested goods are very different from those of the opponent’s goods. They do not usually have the same retail outlets and are not usually made by the same manufacturers. Furthermore, they are neither complementary to nor in competition with each other. Therefore, they are dissimilar.

The contested animal skins are raw materials for making leather. The contested imitation leather is a raw material for making leather goods. The mere fact that these goods can be used to manufacture the opponent’s bags in Class 18 or some of the opponent’s goods in Class 25 is not sufficient in itself for establishing similarity between them, as their natures, purposes, relevant publics and distribution channels are usually distinct. According to case-law, raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw materials are in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). Therefore, they are dissimilar.

The abovementioned contested goods that are dissimilar to the opponent’s goods are also dissimilar to the opponent’s services in Class 35, since they are different in nature and, considering that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together and offering for sale a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, the method of use of those goods and services is different. They are neither in competition with nor necessarily complementary to each other. Since the opponent’s retail services are related to particular products that are different from the contested umbrellas and parasols; animal skins and imitation leather, these goods and services do not have anything in common.

Contested goods in Class 25

Clothing, footwear are identically contained in both lists of goods.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Contested services in Class 35

The contested publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; business administration services for processing sales made on the internet; commercial management; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not are, in principle, business administration, advertising and business management services consisting of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc., and also include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The opponent’s the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods through retail stores, wholesale outlets or means of electronic media, namely: clothing, footwear, headgear and goods made of leather and imitation of leather, namely, bags consists of the sale of goods to consumers from fixed locations or through global telematics networks. The contested services deal with helping businesses to achieve certain goals and objectives. The mere fact that some of the contested services refer to sales promotion or business administration services for processing sales made on the internet is not enough to create the necessary link between the contested services and the opponent’s services. These services differ in their nature, purpose and relevant public. Moreover, they relate to different types of businesses and are offered by different companies in different fields of activity. Therefore, they are dissimilar.

The same is true for the opponent’s goods in Classes 18 and 25, since they are clearly different in their nature, purpose and relevant consumers from the contested services in Class 35. These goods and services are not complementary to or in competition with each other and are unlikely to be provided by the same undertakings. Therefore, the contested services in Class 35 are also considered dissimilar to the opponent’s goods in Classes 18 and 25.

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 average.

3. The signs

VILA CLOTHES	VILANOVA
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 earlier mark is a word mark, ‘VILA CLOTHES’. Part of the relevant public will perceive the word ‘VILA’ as referring to a country mansion or residence, either because it exists as such in their official languages (e.g. ‘vila’ in Bulgarian, Lithuanian, Romanian and Slovenian) or because it is very similar to the equivalent word in their languages (e.g. ‘villa’ in English, German and Italian). The degree of distinctiveness of the word ‘VILA’ is average, since it does not directly describe or allude to any characteristics of the relevant goods in a manner that could affect its distinctiveness in a material way.

The word ‘CLOTHES’ of the earlier mark is a very basic English word (05/10/2011, T-118/09, BLOOMCLOTHES, EU:T:2011:563, § 38) and will be understood at least by the part of the relevant public in the relevant territory that has an elementary knowledge of English. This word is descriptive of the relevant goods in Class 25, since it describes the goods themselves, and its degree of distinctiveness is low for the relevant goods in Class 18, because consumers are likely to consider these goods as accessories that complement articles of clothing.

The contested sign is a one-word mark, ‘VILANOVA’. However, the Court has held that, although average consumers normally perceive 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). In the present case, the Opposition Division considers that the part of the relevant public that, as indicated above, will understand the word ‘VILA’ will be able to instantly identify this word in the contested sign. Moreover, part of the public will understand the word ‘NOVA’ as meaning ‘new’, because it exists as such in their official languages (e.g. Bulgarian and Slovenian), because it is very similar to the equivalent word in their languages (e.g. ‘nuova’ in Italian) or because it is the feminine form of the commonly known Latin word ‘novus’ (e.g. ‘nova’ will be understood as meaning ‘new’ in Romania). For this part of the public, this element may be considered weak, as it might be perceived as a laudatory indication that the goods are new (e.g. a new collection).

Considering the possible perceptions of the marks indicated above, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that perceives both ‘VILA’ and ‘NOVA’ as having the abovementioned meanings (e.g. the Bulgarian-, Romanian- and Slovenian-speaking parts of the public) and that understands the basic English word ‘CLOTHES’, because this part of the public will be more likely to confuse the signs.

Since both marks are word marks, neither of them has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘VILA’, which constitutes the first element of the earlier mark, ‘VILA CLOTHES’, and is reproduced at the beginning of the contested sign, ‘VILANOVA’. The signs differ in the second element, ‘CLOTHES’, of the earlier mark and the second part of the contested sign, ‘NOVA’.

However, account must be taken of the fact that the signs coincide in their first and most distinctive element, ‘VILA’, and, as consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, the element ‘VILA’ will be the first element noticed and remembered by the relevant consumers. Since the differences between the marks are limited to their non-distinctive or weak elements, namely ‘CLOTHES’ of the earlier mark and ‘NOVA’ of the contested sign, the signs are considered visually similar to a higher than 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 ‘VILA’. The pronunciation differs in the sound of the letters ‘CLOTHES’ and ‘NOVA’ of the earlier mark and the contested sign, respectively.

The Opposition Division agrees with the applicant that although the word ‘CLOTHES’ in the earlier mark is descriptive, it is not negligible and will be pronounced by the relevant consumers. However, the degree of distinctiveness of this element and of the element ‘NOVA’ of the contested sign must also be taken into account. Considering the weight attributed to these elements and the fact that the coinciding element ‘VILA’ is the most distinctive element in both marks, the signs are considered aurally similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the coinciding element ‘VILA’ (which is the most distinctive element in both signs) conveys an identical concept and the signs differ only in the meanings conveyed by their descriptive or weak elements, namely ‘CLOTHES’ of the earlier mark and ‘NOVA’ of the contested sign, the marks are considered conceptually similar to a higher than 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 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, despite the presence of a non-distinctive (for the relevant goods in Class 25) or weak (for the relevant goods in Class 18) element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

As concluded above, the contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services and they target the public at large with an average degree of attention.

As explained in section c), the signs are visually, aurally and conceptually similar to a higher than average degree on account of the coinciding element ‘VILA’, which is the first and most distinctive element in both marks. The degree of distinctiveness of the earlier mark is average.

Taking into account the fact that the differences between the signs arise from the second and non-distinctive or weak elements of the marks, namely ‘CLOTHES’ of the earlier mark and ‘NOVA’ of the contested sign, it must be concluded that they are not capable of counteracting the similarities between the signs, arising from their coinciding and distinctive element ‘VILA’. Although these additional elements, ‘CLOTHES’ and ‘NOVA’, will create some visual, aural and conceptual differences between the marks and for the relevant goods (in Classes 18 and 25), the visual aspect plays the greatest role (since the goods in question will be examined visually prior to their purchase), it is highly conceivable that the relevant consumer will make a connection between the conflicting signs and will perceive the contested sign as a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), for example for a new collection.

In its observations of 27/09/2016, the applicant refers to the opposition decision of 15/08/2016, B 2 566 381, CASANOVA, in support of its argument that the mark ‘VILANOVA’ will be understood by the average consumer as a fanciful word that does not have any specific meaning, although it may be regarded by some part of the relevant public as a family name or as the name of a Spanish county. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the case referred to by the applicant, the Opposition Division decided that the word element ‘CASANOVA’ could be associated with a famous Italian adventurer who lived in the 18th century, due to the many portrayals of his adventures in art and literature, simply with a man noted for his amorous adventures (i.e. a womaniser) or with a person’s surname. Therefore, it was reasonable to assume that it would be perceived as one word. However, the same conclusion cannot be reached in relation to the word ‘VILANOVA’. Therefore, the decision referred to by the applicant is not considered comparable to the present case.

In its observations, the applicant argues that the word ‘VILA’ in the earlier trade mark has a low degree of distinctive character, given that there are many trade marks registered for goods in Classes 18 and 25 that include this word. In support of its argument, the applicant refers to several European Union, international and Portuguese trade mark registrations.

In this regard, the Opposition Division notes that the existence of several 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 ‘VILA’ to such an extent that it is considered weak in relation to the goods in Classes 18 and 25. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. In the present case, the previous cases referred to by the applicant, namely the Lisbon Court of Commerce decision, the Spanish Industrial Property Office decision and the French Industrial Property Office decision, are not relevant, since the fact that a likelihood of confusion was not established in three Member States of the European Union does not automatically mean that there is no likelihood of confusion in other Member States.

Considering all the above and taking into account 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), the Opposition Division finds that there is a likelihood of confusion on the part of the public in question (i.e. the Bulgarian-, Romanian- and Slovenian-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 partly well founded on the basis of the opponent’s European Union trade mark registration No 8 291 338, ‘VILA CLOTHES’. It follows that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier mark.

The rest of the contested goods and services 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.

The opponent also based its opposition on Danish trade mark registration No VR 1997 01726, ‘VILA’. However, since the scope of this registration as regards the goods covered is narrower, the outcome cannot be different with respect to the goods and services that were found to be dissimilar to those of the contested sign.

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

Janja FELC

Rasa BARAKAUSKIENE

Ana MUÑIZ RODRÍGUEZ

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.