OPPOSITION No B 2 651 662

Cofra Holding AG, Grafenauweg 10, 6300 Zug, Switzerland (opponent), represented by Balder IP Law S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Asier Fernández Yedra, Vechtstraat 67 H., 1079 JA Amsterdam, the Netherlands (applicant).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 651 662 is partially upheld, namely for the following contested goods:

Class 9:        Cases for electronic diaries; Covers (Shaped -) for computers; Covers for telephone receivers; Covers for smartphones; Sleeves for laptops; Leather cases for mobile phones; Carriers adapted for mobile phones; Flip covers for smart phones; Mobile telephone covers made of cloth or textile materials.

Class 18:        Handbags made of leather; Bags; Multi-purpose purses; Evening handbags; Canvas bags; Flight bags; Travelling handbags; Handbags; Ladies’ handbags; Gentlemen’s handbags; Shoulder bags; Handbags, purses and wallets; Leather purses; Briefcases [leather goods]; Leather credit card wallets; Card wallets [leatherware]; Leather attaché cases; Briefcases and attache cases; Briefbags; Shoulder belts; Shoulder belts [straps] of leather; Animal skins; Leather bags; Leather suitcases; Boxes made of leather; Girths of leather; Travelling sets [leatherware]; Key-cases of leather and skins.

Class 25:        Waist belts; Leather belts [clothing]; Leather headwear; Gloves including those made of skin, hide or fur; Cuffs; Scarfs.

2.        European Union trade mark application No 14 776 413 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 776 413. The opposition is based on European Union trade mark registration No 11 874 252. 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 9:         Glasses, sunglasses, ski goggles and glasses frames; Scientific, nautical, surveying, photographic, cinematographic and optical apparatus and instruments, except binoculars, telescopes, spotting scopes, and lenses for cameras, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computer; Fire-extinguishing apparatus.

Class 18:         Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks.

Class 25:         Clothing, footwear, headgear.

The contested goods are the following:

Class 9:         Cases for electronic diaries; Covers (Shaped -) for computers; Covers for telephone receivers; Covers for smartphones; Sleeves for laptops; Leather cases for mobile phones; Carriers adapted for mobile phones; Flip covers for smart phones; Mobile telephone covers made of cloth or textile materials.

Class 18:         Handbags made of leather; Bags; Multi-purpose purses; Evening handbags; Canvas bags; Flight bags; Travelling handbags; Handbags; Ladies’ handbags; Gentlemen’s handbags; Shoulder bags; Handbags, purses and wallets; Leather purses; Briefcases [leather goods]; Leather credit card wallets; Card wallets [leatherware]; Leather attaché cases; Briefcases and attache cases; Briefbags; Shoulder belts; Shoulder belts [straps] of leather; Animal skins; Saddlery of leather; Leather bags; Leather suitcases; Boxes made of leather; Girths of leather; Travelling sets [leatherware]; Key-cases of leather and skins.

Class 25:         Waist belts; Leather belts [clothing]; Leather headwear; Gloves including those made of skin, hide or fur; Cuffs; Scarfs.

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 9

The contested cases for electronic diaries; covers (shaped -) for computers; covers for telephone receivers; covers for smartphones; sleeves for laptops; leather cases for mobile phones; carriers adapted for mobile phones; flip covers for smart phones; mobile telephone covers made of cloth or textile materials are similar to the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes in Class 18. The latter include, inter alia, various bags and cases. Therefore the goods under comparison can have the same nature, purpose and methods of use, as they are intended to carry various items. They can have the same producers and target the same public. Therefore, these goods are similar.

Contested goods in Class 18

Animal skins are identically contained in both lists of goods.

The contested handbags made of leather; bags; multi-purpose purses; evening handbags; canvas bags; flight bags; travelling handbags; handbags; ladies’ handbags; gentlemen’s handbags; shoulder bags; handbags, purses and wallets; leather purses; briefcases [leather goods]; leather credit card wallets; card wallets [leatherware]; leather attaché cases; briefcases and attache cases; briefbags; leather bags; leather suitcases; boxes made of leather; travelling sets [leatherware]; key-cases of leather and skins; shoulder belts; shoulder belts [straps] of leather; girths of leather; saddlery of leather are included in the broad category of, or overlap with, the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes. Therefore, they are identical.

Contested goods in Class 25

The contested waist belts; leather belts [clothing]; gloves including those made of skin, hide or fur; cuffs; scarfs are all different types of clothing and are therefore included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested leather headwear is included in the broad category of the opponent’s headgear. 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, most of the goods found to be identical or similar are directed at the public at large. The degree of attention is considered to be average for these goods. However, some of the goods found to be identical, namely animal skins, are directed at manufacturers sourcing leather as either a raw material or a semi-worked material, the quality of which has an important impact on the finished goods. The degree of attention is considered above average for these goods. Saddlery of leather is directed at a specialised public, namely horse-riders, who have specific knowledge and expertise in the relevant field. Considering that these are rather specialised and expensive goods and that they are not bought on a daily basis, it is considered that the degree of attention of this specialised public is high with regard to these goods.

3. The signs

RODEO
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 sign composed of a single word, ‘RODEO’, whereas the contested sign is a figurative mark consisting of the verbal elements ‘RODEO’ and ‘BLUES’, in standard upper case letters and a figurative element that may be perceived by a part of the public as depicting two letters, ‘R’ and ‘B’, in a circle. It can be reasonably assumed that this part of the public will perceive these letters as the initial letters of the verbal elements ‘RODEO BLUES’. These letters are highly stylised and the letter ‘R’ is reversed, which is why another part of the public may not perceive them. For that part of the public, the figurative element is fanciful.

The verbal element ‘RODEO’, present in both signs, will be associated with ‘a sport and public entertainment in which cowboys show different skills by riding wild horses and catching cows with ropes’ (information extracted from Cambridge Dictionary on 28/02/2017 at www.dictionary.cambridge.org/es/diccionario/ingles/rodeo) or ‘an exhibition or contest in which cowboys show their skill at riding broncos, roping calves, wrestling steers, etc.’ (information extracted from Oxford Dictionaries on 28/02/2017 at www.en.oxforddictionaries.com/definition/us/rodeo). These meanings will be understood throughout the European Union because the word either exists in the relevant languages or is widely known, since it is frequently used in popular culture (e.g. in westerns and other US movies, television shows and books). With regard to the contested sign, bearing in mind that some of the relevant goods are clearly intended for equestrian sports, this element will be perceived as merely indicating the purpose of these goods, namely saddlery of leather. Therefore, with regard to these goods, this element is non-distinctive. For the rest of the goods, the verbal element ‘RODEO’ is fanciful and therefore distinctive.

The contested sign contains an additional verbal element, ‘BLUES’, which will be understood by the English-speaking public as either ‘feelings of melancholy, sadness, or depression’ or ‘melancholic music of black American folk origin, typically in a twelve-bar sequence’ (information extracted from Oxford Dictionary on 28/02/2017 at www.en.oxforddictionaries.com/definition/us/blues). It is very likely that the non-English-speaking public in the European Union will also associate the word in question with the latter meaning. The word ‘blues’ exists in the relevant languages or is widely known, since it is frequently used in popular culture (e.g. on radio, in concerts, at festivals or in films). The Opposition Division is of the opinion that, for the relevant goods, the verbal element ‘BLUES’ is fanciful and therefore distinctive. The expression ‘RODEO BLUES’ might be associated by a part of the public with a piece of country music. For the remaining part of the public, it will have no particular meaning and the two words will be perceived separately.

The earlier mark, as it is a word mark consisting of one word, has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The contested sign has no elements that could be considered more dominant (visually eye-catching) 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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the word ‘RODEO’. However, they differ in the verbal element ‘BLUES’ and in the figurative device described above (i.e. the depiction of two letters, ‘R’ and ‘B’, in a circle) in the contested sign.

Therefore, taking into account that consumers will focus on the verbal elements of the contested sign and that ‘RODEO’ is the first of these elements, it is concluded that the signs are visually similar to an average degree for the goods for which the element ‘RODEO’ has a normal degree of distinctiveness.

However, the signs are visually similar to only a low degree in relation to saddlery of leather, for which the element ‘RODEO’ is non-distinctive.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛RODEO’, pronounced in three syllables and present identically in both signs. It is the first word in the contested sign. The pronunciation differs in the sound of the letters ‛BLUES’ of the contested sign, usually pronounced as one syllable, which have no counterparts in the earlier mark.

Therefore, the signs aurally are similar to a high degree with regard to the goods for which the element ‘RODEO’ is distinctive.

However, the signs are aurally similar to only a low degree in relation to saddlery of leather, for which the element ‘RODEO’ is non-distinctive.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public in the relevant territory will perceive the earlier sign as ‘a sport and public entertainment in which cowboys show different skills by riding wild horses and catching cows with ropes’. The contested sign will be perceived either as two separate words with the meanings described above or as an expression related to a piece of country music. In both cases, the concept of the word element ‘RODEO’ is clearly perceptible in the marks.

Therefore, as the signs will be associated with similar meanings, they are conceptually similar to an average degree with regard to the goods for which the element ‘RODEO’ is distinctive.

However, the signs are conceptually similar to only a low degree in relation to saddlery of leather, for which the element ‘RODEO’ is non-distinctive.

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. Considering what has been stated above in section c) of this decision and taking into account that earlier marks, whether EUTMs or national marks, are presumed to have at least a minimum degree of inherent distinctiveness (24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41), the distinctiveness of the earlier mark must be seen as low for some of the goods in question, namely the goods made of leather that are related to equestrian sports. The earlier mark has a normal degree of distinctiveness for the remaining goods, in relation to which it has no meaning from the perspective of the public at issue.

5. Global assessment, other arguments and conclusion

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.

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.

Taking into account the high degree of attention of the relevant specialised public for goods that are related to horse-riding, the low degree of similarity between the signs resulting from the element ‘RODEO’, which the signs have in common, is not sufficient to lead to a likelihood of confusion in relation to saddlery of leather in Class 18, even if these goods are identical to those of the earlier mark. For these goods, the additional elements of the contested sign are sufficient to exclude any likelihood of confusion between the marks, bearing in mind that the element that the signs have in common, and consequently the earlier mark, is of limited distinctiveness for the relevant public.

It follows that the opposition is not successful insofar as the contested saddlery of leather is concerned.

As concluded above, the remaining goods, for which the element ‘RODEO’ is distinctive, are identical or similar and the signs are visually, aurally and conceptually similar to at least an average degree.

The verbal element ‛RODEO’ constitutes the entire earlier mark and is fully included in the contested sign as its first element. The element ‛BLUES’ of the contested sign cannot counteract the visual, aural and conceptual similarities between the signs under comparison so as to safely exclude a likelihood of confusion. The Opposition Division is of the opinion that the relevant consumers may think that the goods found to be identical or similar come from the same company or from economically-related companies.

The Opposition Division also notes that the word ‛blues’ is not an invented word, but has a meaning, as explained above. It is possible that this word could appear next to the word ‛rodeo’. Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). This also applies in relation to those goods for which the degree of attention is expected to be above average, namely animal skins.

Therefore, the Opposition Division considers that a likelihood of confusion, including a likelihood of association, cannot be safely excluded in relation to the goods for which the coinciding element ‘RODEO’ is distinctive.

The applicant refers to previous decisions of the Office to support its arguments (e.g. 19/11/2010, R 0671/2010-1, Clean Twist, and 04/03/2010, R 1467/2008-4, B-LIFT / BIO-LIFT et al.). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, as they refer to different factual circumstances.

In addition, the applicant argues that the contested sign is used together with the figurative element described above. According to the applicant, the contested sign ‛can be found in business cards and shopping bags, which makes the risk of confusion of the origin or source of the goods is unmistakable’. This argument has to be set aside, as the comparison of the signs and the outcome based on this comparison should concern the earlier mark and the contested sign as registered. The way in which the contested trade mark is presented on packaging and by the distribution channels is irrelevant for the assessment of likelihood of confusion.

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

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 874 252. It follows that the contested trade mark must be rejected for those goods that are not clearly intended for equestrian sports, namely all the contested goods in Classes 9, 18 and 25 with the exception of saddlery of leather.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Natascha GALPERIN

Michal KRUK

Plamen IVANOV

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.