OPPOSITION No B 2 359 191

Mustang – Bekleidungswerke GmbH + Co. KG, Austr. 10, 74653 Künzelsau, Germany (opponent), represented by Roos Nelskamp Schumacher & Partner Rechtsanwälte Fachanwälte, Kapuzinerstraße 11, 53111 Bonn, Germany (professional representative)

a g a i n s t

Blount, Inc., 4909 SE International Way, Portland, Oregon 97222, United States of America (applicant), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 359 191 is upheld for all the contested goods.

2.        European Union trade mark application No 12 712 782 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 712 782. The opposition is based on European Union trade mark registration No 358 457. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 25:        Clothing, corsets, sportswear, clothing of leather, belts, shoes, footwear for sports, headgear.

The contested goods are the following:

Class 25:        Clothing, hats and boots.

Clothing is identically contained in both lists of goods.

The contested hats and boots are included in the broader categories of the opponent’s headgear and footwear respectively. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

OREGON
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 earlier mark is a word mark, ‘OREGON’. The contested sign is a figurative mark composed of the verbal element ‘OREGON’ depicted in bold slightly stylised upper case letters and framed by a figurative element in the form of a rectangle with rounded corners, depicted using a thick black line.

The word ‘OREGON’ in both signs will be perceived by the relevant consumers as referring to the State of Oregon in the north-western United States of America, on the Pacific coast. The distinctiveness of the word ‘OREGON’ is seen as normal, 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 figurative element of the contested sign, namely the black frame, is purely decorative and, therefore, the word ‘OREGON’ is considered the most distinctive element of the contested sign.

Neither the earlier mark nor the contested sign has any elements that could be considered clearly more dominant (visually eye-caching) than other elements.

Visually, the signs coincide in the word ‘OREGON’. The signs differ in the secondary figurative element of the contested sign, namely the black frame, and in the slight stylisation of the verbal element.

Having regard to the fact that the earlier mark and the most distinctive element of the contested sign are identical, the signs are considered visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the earlier mark and the contested sign coincides in the sound of the word ‘OREGON’, present identically in both signs. Since the figurative element will not be referred to orally, the signs are considered aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘OREGON’ and the figurative element of the contested sign does not convey any concept, the signs are considered conceptually identical.

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 that could affect its distinctiveness 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

As concluded above, the contested goods are identical to the opponent’s goods and they target the public at large with an average degree of attention. The degree of distinctiveness of the earlier mark is average.

As explained in section c), the signs are visually similar to a high degree and aurally and conceptually identical on account of the coinciding element ‘OREGON’. The degree of distinctiveness of the earlier mark is average.

The differences between the earlier mark and the contested sign are limited to the decorative figurative element and slight stylisation of the verbal element of the contested sign, which can be perceived only visually. Even taking into account the fact that for the relevant goods in Class 25 the visual aspect plays a greater role (since generally in clothes and shoe shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff and, therefore, the visual perception of the marks in question will generally take place prior to purchase), these differences are not able to counteract the similarities arising from the identical verbal elements ‘OREGON’ and to prevent a likelihood of confusion between the contested sign and the earlier mark.

Therefore, the relevant public is likely to perceive the contested sign as a variant of the earlier mark and believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 358 457. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Judit NÉMETH

Rasa BARAKAUSKIENE

Ana MUÑÍZ 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.

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.