OPPOSITION No B 2 753 930
J. Marçal de Matos & Filhos, Lda., Avenida Ferreira de Castro, nº 55, 2605-464 Casal de Cambra, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados – Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)
a g a i n s t
Nuno Magalhães Correia, Rua Dominguez Alvarez, n.º 24 7.º-D, 4150-801 Porto, Portugal (applicant), represented by Rui Pereira, Rua Júlio Dinis, n.º 247, 4.º E-9, 4051-401 Porto, Portugal (professional representative).
On 14/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 753 930 is upheld for all the contested goods, namely:
Class 25: Headgear; clothing.
2. European Union trade mark application No 15 328 032 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 328 032, namely against all the goods in Class 25. The opposition is based on Portuguese trade mark registration No 362 529. 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
The goods on which the opposition is based are the following:
Class 18: Umbrellas, parasols, and walking sticks.
Class 25: Clothing.
The contested goods are the following:
Class 25: Headgear; clothing.
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.
Clothing is identically contained in both lists of goods.
The contested headgear and the opponent’s clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, 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. 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 clothing are considered similar.
- 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.
- The signs
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JONU |
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Earlier trade mark |
Contested sign |
The relevant territory is Portugal.
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 the word mark ‘JONU’, which, for the relevant public, is a fanciful word with no meaning in relation to the goods in question. Therefore, it has an average degree of distinctiveness.
The contested sign is a figurative mark consisting of a device placed above the verbal element ‘JUNO’ written in bold upper case slightly stylised letters in various shades of silver. The device is a curved triangle with its apex pointing down. It has a silver outline and a partly blue, partly silver background, making it appear as if some of the blue has been torn from the background and is hanging loose, displaying the silver underneath.
The verbal element ‘JUNO’ is fanciful and has no meaning in relation to the goods; therefore, it has an average degree of distinctiveness. The device, albeit resembling a shield, is not likely to trigger any specific semantic associations in the perception of the relevant public, and it has an average degree of distinctiveness in relation to the goods in question. The contested sign has no elements that could be considered clearly more dominant than other elements.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Visually, the signs coincide in the letters ‘J*N*’, present identically in both signs. They also coincide in the remaining letters of the verbal elements, namely the letters ‘O’ and ‘U’, but these are reversed in the signs. Furthermore, the verbal elements of the signs have the same structure, as their consonants and vowels are placed in the same positions. The signs differ in the stylisation and the device of the contested sign.
Therefore, and taking into consideration the strong visual similarity between the letters ‘o’ and ‘u’, as well as the stronger impact of the verbal components, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛J*N*’, present identically in both signs. Furthermore, the letter ‘U’ in the earlier mark and the letter ‘O’ in the contested sign will also be pronounced the same, due to their placement at the end of the word. The pronunciation differs in the sound of the letter ‛*O**’ of the earlier mark and the letter ‘*U**’ in the contested sign; however, the difference in the pronunciation of these two vowels is only slightly perceptible.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 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.
- Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).
The goods are partly identical and partly similar. The distinctiveness of the earlier mark is normal and the general public’s degree of attention is average.
The verbal elements of the signs differ only in the position of the same vowels, ‘O’ and ‘U’, which are reversed, leading to an average degree of visual similarity and a high degree of aural similarity between the signs, as shown in section c) of this decision. Taking into account the stronger impact of the verbal elements than the figurative elements and consumers’ imperfect recollection, the Opposition Division finds that such a difference is not sufficient to exclude a likelihood of confusion.
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 Portuguese trade mark registration No 362 529. 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
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Birgit Holst FILTENBORG |
Cecilie Leth BOCKHOFF |
Michele M. BENEDETTI-ALOISI |
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.