OPPOSITION No B 2 648 031
Manuel Jacinto, Lda, Rua da Igreja, n°352, 4535-446 S.Paio de Oleiros, Portugal (opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º 1069-229 Lisbon, Portugal (professional representative)
a g a i n s t
Lovehorses di Chemoli Barbara, Via Montindon 6 37026 Pescantina (VR) Italy (applicant), represented by Adexe Srl, Corso Porta Nuova 131, 37122 Verona, Italy (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 648 031 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 823 785 , namely against some of the goods in Classes 18, 25 and 35. The opposition is based on the following earlier rights:
- Portuguese trade mark registration No 379 879
- United Kingdom trade mark registration No 2 438 534
- European Union trade mark registration No 4 872 107
The opponent invoked Article 8(1)(b) EUTMR.
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 goods and services
The goods on which the opposition is based are the following:
Portuguese trade mark registration No 379 879
Class 18: Hand bags, travelling bags, umbrellas, sunshades, whips, horse-trappings and saddlery.
Class 25: Belts.
United Kingdom trade mark registration No 2 438 534
Class 18: Goods made from leather, none being for equine use; luggage, bags and handbags; wallets and purses.
European Union trade mark registration No 4 872 107
Class 35: Advertising, including television and radio advertising; dissemination of advertising material such as pamphlets, prospectuses, printed matter and samples; rental of advertising space; business management; business administration.
The contested goods and services are the following:
Class 18: Saddle trees; Saddlery; Fastenings for saddles; Leather shoulder belts; Animal harnesses; Casual bags; Sport bags; Bags for bridles (harness); Bridoons; Head-stalls; Straps (Leather -); Horse collars; Horse blankets; Laces (Leather -); Straps of leather [saddlery]; Harness straps; Harness for horses; Whips; Saddle cloths for horses; Saddle cloths for horses; Harness fittings; Bits for animals [harness]; Blinkers [harness]; Reins; Haversacks; Riding saddles; Stirrups; Stirrup leathers; Traces [harness]; Backpacks.
Class 25: Clothing of imitations of leather; Leather clothing; Clothing; Bandanas [neckerchiefs]; Caps [headwear]; Berets; Goloshes; Footwear; Training shoes; Shirts; Hats; Hoods [clothing]; Belts [clothing]; Hats; Headbands [clothing]; Scarves; Boot uppers; Gaiters; Jackets [clothing]; Jackets (Stuff -) [clothing]; Gloves [clothing]; Ready-to-wear clothing; Sweaters; Pelerines; Waistcoats; Trousers; Ear muffs [clothing]; Parkas; Ponchos; Sashes for wear; Topcoats; Ankle boots; Boots; Tee-shirts; Combinations [clothing].
Class 35: Wholesale services in relation to clothing; Online retailing of clothing; Wholesale services in relation to sporting articles; Retail services connected with the sale of clothing and clothing accessories.
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
Casual bags; sport bags, haversacks; backpacks are included in the opponent’s broader category, bags, covered by the earlier United Kingdom trade mark. Therefore, they are identical.
Saddlery, whips equally appears on the list of the opponent’s Portuguese trade mark and therefore there is identity.
Saddle trees; Fastenings for saddles; Leather shoulder belts; Animal harnesses; Bags for bridles (harness); Bridoons; Head-stalls; Straps (Leather -); Horse collars; Horse blankets; Laces (Leather -); Straps of leather [saddlery]; Harness straps; Harness for horses; Saddle cloths for horses; Saddle cloths for horses; Harness fittings; Bits for animals [harness]; Blinkers [harness]; Reins; Riding saddles; Stirrups; Stirrup leathers; Traces [harness] are at least similar to the opponent’s saddlery (covered by the Portuguese trade mark), given that some of these goods are even included in the broader category of saddlery, and in any event all these goods are connected to horse riding. Consequently, they can be expected to be manufactured by the same undertakings, sold through the same distribution channels, targeting the same public.
Contested goods in Class 25
Belts [clothing] are identically included in both lists of goods (earlier Portuguese trade mark).
The remaining contested goods in this Class can be divided into five categories:
- Clothing of imitations of leather; leather clothing; clothing; ready-to-wear clothing; combinations [clothing] include, as broad categories, the opponent’s belts, which cannot be filtered ex officio from the applicant’s goods. Therefore they are identical.
- bandanas [neckerchiefs]; shirts; hoods [clothing]; headbands [clothing]; scarves; jackets [clothing]; jackets (stuff -) [clothing]; gloves [clothing]; sweaters; pelerines; waistcoats; trousers; ear muffs [clothing]; parkas; ponchos; sashes for wear; topcoats; tee-shirts are similar to belts given that they are all clothing items with the same purpose, they coincide in producers, distribution channels and public.
- Footwear (goloshes; footwear; training shoes; ankle boots; boots; gaiters)
Footwear serves the same purpose as clothing: both are used for covering parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for belts will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both belts and footwear. Therefore, the goods are similar.
- Headgear (caps [headwear]; berets; hats)
Headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing items, and also belts covered by the earlier Portuguese mark. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and belts are considered similar.
- Boot uppers on the other hand, are dissimilar to all the goods and services of the opponent’s earlier marks. There do not coincide in purpose, method or use and target public. They are neither complementary, nor in competition.
Contested services in Class 35
As for the contested wholesale services in relation to clothing; online retailing of clothing; wholesale services in relation to sporting articles; retail services connected with the sale of clothing and clothing accessories, it should be borne in mind that retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33).
The opponent’s earlier Portuguese sign covers belts, which are goods that cannot be filtered from the broad categories of clothing, sporting articles, clothing accessories. The wholesaling and retailing of these goods is, consequently, similar to a low degree to the goods of the opponent’s earlier Portuguese mark in Class 25.
Comparison with the earlier European Union trade mark registration
It must be clarified that all the contested good and services are dissimilar to the advertising, business management, business administration services covered by the earlier European Union trade mark registration.
Advertising services consist 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. Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. Business administration relates to the day-to-day organising of business activities.
These services of the opponent are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services, including the contested retail and wholesale services. The goods and services differ in producers/providers, distribution channels, they are neither complementary nor in competition. They are therefore dissimilar.
The opponent’s earlier European trade mark registration, therefore, covers services which are dissimilar to the contested goods and services; therefore, one of the criteria of Article 8(1)(b) EUTMR is not met and the opposition cannot succeed under this ground based on this earlier mark. The examination of the likelihood of confusion will consequently only proceed with the opponent’s earlier Portuguese and United Kingdom trade mark registrations.
- 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 and services found to be identical or similar to various degrees are directed at the public at large as well as horseback riding enthusiast or professionals, whose attention will generally be higher given their expertise and safety concerns.
The degree of attention will vary from average to high depending on the safety risks and the price of the goods purchased.
- The signs
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Earlier trade marks |
Contested sign |
The relevant territory is Portugal and the United Kingdom.
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 earlier marks contain a black, real life depiction of a horse silhouette from the side. In the context of the goods covered by the earlier marks, compared above, i.e. bags, saddlery, whips, belts, the image of a horse is descriptive of the possible intended use of the products, insofar as they consist of or contain items designed for horseback riding. The horse depiction does not depart significantly from the common representation of a horse; therefore its representation cannot render the image distinctive to an average degree. Consequently, this element of both earlier marks has low distinctive character.
The term ‘HORSE’ in the context of bags compared above covered by the earlier United Kingdom trade mark registration is descriptive of the goods’ possible intended use as bags also include equestrian bags. Therefore, this term is non-distinctive for the English-speaking relevant public. Moreover, for this public the term ‘HORSES’ in the contested mark will also be seen as being devoid of distinctive character for the relevant goods.
In relation to the Portuguese relevant public, ‘HORSE’/’HORSES’ is meaningless and its distinctiveness is normal.
The contested mark also contains a depiction of a horse, jumping over a pile of logs. However, this representation is quite original, cartoon-like and departs significantly from the real life representation of a horse. Therefore, this element of the contested mark is distinctive on account of its particular representation.
‘LOVE’ is understood throughout the relevant territories meaning to have a great attachment to and affection for a person or thing [Online Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/love ]. For the English-speaking public, ‘LOVE HORSES’ will be understood as a statement of endorsement promoting horses. This endorsement will also be seen by the Portuguese-speaking public connecting the meaningful word ‘LOVE’ with the cartoon horse. In neither scenario will ‘LOVE’ be perceived as laudatory, as the verb relates to feeling affectionate for horses as opposed to calling to be affectionate for the goods in question. In this context, therefore, ‘LOVE’ is distinctive.
Visually, the signs coincide in ‘HORSE’, albeit differ in the typeface of these letters. They differ in the additional ‘S’ in the contested mark. As explained above, the stylisation of the horses in the respective signs completely differ. The signs also differ in the additional, distinctive word, ‘LOVE’. It should be recalled that depending on the consumers’ perception (English or Portuguese-speaking public) ‘HORSE’ may or may not be distinctive.
Therefore, the signs are visually similar only to a remote or low degree, depending on the distinctiveness of ‘HORSE’.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HORSE’, and differ in the final ‘S’ sound and ‘LOVE’ of the contested sign.
Depending on the consumers’ perception of the descriptive meaning of ‘HORSE’, the signs are aurally similar to a low or medium degree.
Conceptually, the signs are similar to a low degree on account of coinciding in the concept of a horse, regardless whether the word ‘HORSE’ itself is understood, as both signs contain the image of a horse. However, this concept has weak distinctive character in the context of the relevant goods. They differ in the concept of ‘LOVE’ in the contested sign.
As the signs have been found similar at least in one aspect, the examination of the likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, in relation to the English-speaking public the distinctiveness of the earlier United Kingdom mark must be seen as low for the goods in question.
According to case-law, ‘the fact that a national mark has been registered means that that mark has a minimum of inherent distinctiveness, since Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) precludes registration of a mark which is devoid of distinctive character…(16/01/2014, T-149/12, Micro, EU:T:2014:11, § 36)
Consequently, the earlier United Kingdom mark must be recognised as having a low degree of distinctive character in relation to the goods in conflict.
The earlier Portuguese mark has a normal degree of distinctiveness for the Portuguese-speaking public, where ‘HORSE’ has no meaning in relation with goods in question, despite the presence of a lowly-distinctive depiction of a horse in relation the conflicting goods, as stated above in section c) of this decision.
- 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 and services are identical, similar, lowly similar or dissimilar.
In the context of some of the goods at hand, notably clothes and bags, the visual aspect of the comparison is more important. This is because generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T 117/03 – T 119/03 & T 171/03, NL, EU:T:2004:293, § 50).
The signs, at best, are visually similar only to a low degree due to the differing typeface, horse representations and the additional element ‘LOVE’. These visual differences are particularly relevant and are considered sufficient to exclude a likelihood of confusion. This finding increasingly holds true for the English-speaking part of the public for whom the distinctiveness of the earlier mark is low.
In the context of the remaining goods, which are directly related to horseback riding, the attentiveness of the relevant public will generally be higher, moreover the earlier marks’ lowly-distinctive horse depiction is offset by the contested mark’s unusual, memorable representation of a horse. These differences are sufficient to counteract the visual and aural similarity in ‘HORSE’ and enable the attentive public to distinguish between the signs.
In the context of the services found to be similar to a low degree, the above-mentioned principle of interdependence applies. The moderate similarity of the signs does not outweigh the low degree of similarity between the goods and services. Finally, in relation to the dissimilar goods, one of the conditions of 8(1)(b) is not met and the likelihood of confusion is excluded.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
| Mark KING | Marianna KONDAS | Michaela SIMANDLOVA
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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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.