The Judgment of the General Court of 7 September 2016, in the case Victor International GmbH versus EUIPO and Gregorio Ovejero Jiménez, interprets the proof of genuine use of an earlier national trademark, and the likelihood of confusion between the earlier national trademark and the EU mark applied for.

Universal Victor International GmbH filed an application for registration of an EU trade mark consisting of the word sign “VICTOR” for classes 25 and 35. Against this application Gregorio Ovejero Jiménez filed a notice of opposition based on the following Spanish figurative trade mark for class 25:

The Opposition Division partially upheld the opposition as the marks at issue were visually, phonetically and conceptually similar, so there was a likelihood of confusion in regard to those goods and services covered by the mark applied for. The Second Board of Appeal of EUIPO dismissed the appeal.

The applicant raises three pleas:

  • Infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation (use of the earlier trade mark in a form differing in elements which do not alter the distinctive character).

The Court establishes that although point (a) of the second subparagraph of Article 15(1) refers only to the use of the EU trade mark, it must apply by analogy to the use of a national mark, in so far as Article 42(3) provides that paragraph 2 of that article is to apply to earlier national trade marks referred to in Article 8(2)(a), ‘by substituting use in the Member State in which the earlier national trade mark is protected for use in the [Union]’. As regards the scope of both articles, proof of genuine use of an earlier national or EU trade mark which form basis of an opposition to an EU trade mark application also includes proof of use of the earlier trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.

In the present case, the use of the earlier mark in forms in which the word “victoria” is accompanied by a figurative element, or is written in colour, or is set within a circle and accompanied by other figurative and word elements as follows:

does not alter within the meaning of point (a) of the second subparagraph of Article 15(1), by the use which had been made of that mark on the market, and is therefore fully entitled to take into account the evidence of genuine use in which the earlier mark appeared in one of the forms reproduced above.

 

  • Infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) and (4) of Regulation No 2868/95 (proof of genuine use).

The applicant submits three points:

  1. The earlier mark is used not as a trade mark but as a company name.

The Court states that it is not correct, as at the invoices the mark appears in the top right-hand corner while the company name appears in the top left-hand corner; as the company name does not correspond to the earlier mark; and as the sign is not accompanied by an address or form of incorporation.

  1. The evidence provided does not establish the use of the earlier mark for ‘footwear (except orthopedic)’, in so far as it does not prove that the earlier mark was affixed directly to the goods or linked to them.

The Court says that there is no need that the earlier mark is affixed directly to the goods, that a connection between the use of the mark and the goods concerned can be established without it being necessary for the mark to be affixed on the goods, and in this instance, the presence of the earlier mark on invoices, catalogues, advertisements relating to the goods concerned, and press articles in which, moreover, it appears inter alia on labels sewn on to the shoes, enables such a link to be established.

  1. Neither the catalogues and magazine cuttings, containing only drawings or designs of shoes but no photographs, labels or packaging material, nor the invoices, in which the earlier mark is not reproduced with the goods or alongside them, could be taken into account as proof of use of the earlier mark.

At this point the Court interprets that each piece of evidence is not to be analysed separately, and considering globally, the intervener had demonstrated the genuine use of the earlier mark for ‘footwear (except orthopaedic)’ during the relevant period in the territory of Spain.

  • Infringement of Article 8(1)(b) of Regulation No 207/2009 (likelihood of confusion).

The Court agreed with the Second Board of Appeal of EUIPO in the followings:

  1. The relevant public is Spain since the earlier mark is a Spanish trade mark. And as regards the goods, the relevant public was composed of the public at large, namely average consumers who are reasonably well informed, observant and circumspect, and whose level of attention is average.
  2. Some of the goods and services were identical as they were covered by the earlier mark and had the same distribution channels, and the rest were similar as they were connected and give the impression that the same undertaking is responsible for manufacturing those goods.
  3. Visually the signs are highly similar as both have six letters in common, those six letters are at the beginning of the words, and one of the signs is included fully in the other. Phonetically both signs are similar, as is apparent from the case-law, signs are phonetically similar when one of the marks is fully included in the other, even when the syllabic structure of the marks at issue differs because of the presence of three syllables in the mark applied for and two syllables in the earlier mark, the overall phonetic impression given by the signs at issue is similar, in so far as the beginning of the earlier mark, to which consumers generally pay more attention, and the mark applied for will be pronounced in the same way. And also they are conceptually similar as the relevant public would perceive the words ‘victor’ and ‘victoria’ as the male and female versions of the same forename.

In consequence, there is a likelihood of confusion between the marks at issue, since the relevant public is likely to believe that the goods and services come from the same undertaking or economically-linked undertakings in so far as the goods and services concerned are partially identical and partially similar, and, moreover, as the signs at issue are visually, phonetically and conceptually similar. It is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands in order to distinguish its various lines from one another (women’s, men’s, youth). In such circumstances, the relevant public might regard the clothing products designated by the marks at issue as belonging to two distinct ranges of products but as coming, nonetheless, from the same undertaking.

Having rejected the three pleas alleged by the applicant, the Court dismissed the action in its entirety.