In Case T-204/14 (Victor International GmbH v EUIPO and Gregorio Ovejero Jiménez and María Luisa Cristina Becerra Guibert) handed down on 7 September 2016, the General Court considered the issues of genuine use and likelihood of confusion.
In 2009, Victor International GmbH (the "Applicant"), filed an EUTM application for the word mark VICTOR for inter alia sports clothing and footwear in Class 25 and related services in Class 35.
Gregorio Ovejero Jiménez and María Luisa Cristina Becerra Guibert (the "Opponents") opposed the application on the basis of a number of Spanish marks including the figurative mark VICTORIA (shown below) for a range of goods in Class 25, which was registered in 1989. The Applicant requested evidence of use and the Opponents produced various documents including invoices, catalogues, delivery notes and advertisements.
Spanish Registration No. 1189894
Mark as registered
Mark as used
The Opposition Division and the Board of Appeal found use in relation to "footwear (except orthopaedic)" in the relevant territory, Spain, and likelihood of confusion. The Applicant filed an appeal to the General Court challenging the nature of the use of the earlier mark and the evidence submitted and claiming likelihood of confusion.
The Applicant argued that the mark was not used in the form registered and that the additional figurative elements and colours altered its distinctive character, particularly in view of its weakness and the fact that the terms "victoria" and "victory" are commonly used as trade marks in the clothing, footwear and accessories sector.
The Court however found that the use of the additional figurative and word elements was of decorative nature only and that the word "victoria" was not weak: it was confirmed that a common forename can serve as a trade mark if it is capable of distinguishing the origin of the goods and services it covers.
In relation to the evidence submitted, the Applicant argued that the earlier mark was used as a trade or company name or trade symbol and that the Opponents did not establish use for "footwear (except orthopaedic)" because the mark was not directly affixed to the goods or linked to them. It was also claimed that the catalogues were not adequate because it was not explained where and to whom they were distributed. The Applicant's attempt to challenge the extent of use of the earlier mark by claiming that that there was no turnover information for the first time at the hearing was dismissed by the Court.
The Court reiterated that in order to examine whether the use of an earlier mark is genuine, an overall assessment must be made, taking into account all the relevant factors. Regarding the use as a company name, the earlier mark was licensed to another company, CNM, SL, thus the relevant evidence was issued by that company. The earlier mark did appear on the invoices, delivery notes and catalogues and it didn't correspond to the company's name, as the Applicant suggested.
As regards the complaint that the mark was not directly affixed to all the shoes presented in the catalogues, the Court confirmed that it is common in the footwear sector for a trade mark to be affixed to the sole of a shoe or inside it. Consequently it was natural that the earlier mark was not visible on certain photographs in the catalogues. According to settled case law, the connection between the mark and the goods can be established without it being necessary for the mark to be affixed to the goods. The invoices, catalogues and advertisements enabled such a link to be established in this case.
In relation to the catalogues, the Court did not accept the Applicant's argument about the extent of their distribution and confirmed that each piece of evidence should be taken into account even, if it is not in itself decisive.
The Court also dismissed the Applicant's argument that no likelihood of confusion could exist and found similarity of the marks and goods/services.
Despite the Applicant's arguments to the contrary, it was held that the sports shoes are not sold exclusively in specialist sports shops, but can also be offered for sale in the same commercial establishments as those selling "footwear (except orthopaedic)", including in shoe shops, department stores or supermarkets.
Further, with regard to sports clothes covered by the mark applied for, the Court found that they were similar to "footwear (except orthopaedic)", because, in addition to their basic function, they have a common aesthetic function by jointly contributing to the external image ("look") of the relevant consumer. In addition, "While it is true that shoes clothe the feet, whereas the goods covered by the mark applied for clothe other parts of the human body, the goods nevertheless have a similar purpose, given that they are manufactured to cover the human body, to hide it, protect it and adorn it".
The Court also found similarity between the Class 25 goods and Class 35 services on the basis that the goods are indispensable to, or, at the very least, important for the development of those services, which are specifically provided when those goods are sold. Thus, retail services provided with the aim of selling certain goods would make no sense without those goods.
This case note was submitted by Vlotina Liakatou Trade Mark associate at MARQUES member Baker & McKenzie.