OPPOSITION DIVISION
OPPOSITION No B 2 430 745
Manuel Ros Fernandez, Polígono Industrial Picassent, Calle 1, Parcela D5, Nave
10, 46220 Picassent, Valencia, Spain (opponent), represented by Javier Ungría
López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
Mascotte Holdings, Inc., 7 Times Square c/o Pryor Cashman LLP, New York,
NY 10036, United States of America (applicant), represented by Bear & Wolf IP LLP,
Third Floor, 57 Farringdon Road, London EC1M 3JB, United Kingdom (professional
representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 430 745 is upheld for all the contested goods.
2. European Union trade mark application No 13 031 811 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 13 031 811 for the word mark ‘RED OCTOBERS’. The opposition is
based on European Union trade mark registration No 5 141 387 for the word mark
‘OCTOBER’, Spanish trade mark registration No 2 697 447 for the word mark
‘OCTOBER’ and Spanish trade mark registration No 2 785 037 for the figurative mark
‘ ’. 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
Decision on Opposition No B 2 430 745 page: 2 of 7
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 opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s Spanish trade mark registration No 2 785 037 ‘ ’, as this mark is duly
registered and renewed.
a) The goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Clothing for woman, man and children, footwear (except orthopaedic),
headgear.
The contested goods are the following:
Class 25: Clothing, namely, shirts, T-shirts, under shirts, night shirts, rugby
shirts, polo shirts, cardigans, jerseys, uniforms, scrubs not for medical
purposes, smocks, dress shirts, pants, trousers, slacks, jeans,
culottes, cargo pants, stretch pants, denim jeans, overalls, coveralls;
Clothing, namely, jumpers, jump suits, shorts, boxer shorts, tops,
stretch tops, tube tops, crop tops, tank tops, tankinis, halter tops,
sweat shirts, hooded sweat shirts, sweat shorts, sweat pants, wraps,
warm-up suits, jogging suits, track suits, play suits, blouses, skirts,
dresses, sweaters, vests, fleece vests, pullovers, snow suits; Clothing,
namely, parkas, capes, anoraks, ponchos, cloaks, shrugs, jackets,
reversible jackets, wind-resistant jackets, shell jackets, sports jackets,
golf and ski jackets, jean jackets, coats, heavy coats, over coats,
blazers, suits, turtlenecks, cloth ski bibs, swimwear, beachwear, tennis
wear, surf wear, ski wear, layettes, infantwear, infants sleepers,
booties, baby bibs not of paper; Clothing, namely, caps, swim caps,
berets, beanies, hats, visors, headbands, wrist bands, sweat bands,
headwear, ear muffs, aprons, scarves, bandanas, belts, suspenders,
neckwear, ties, neckerchiefs, pocket squares, ascots, underwear,
thermal underwear, long underwear, briefs, swim and bathing trunks,
bras, thongs, G-strings; Clothing, namely, singlets, socks, loungewear,
robes, underclothes, pajamas, sleepwear, night gowns, nighties,
lingerie, leg warmers, hosiery, pantyhose, body stockings, knee highs,
leggings, tights, gloves, mittens, rain slickers, rainwear, footwear,
shoes, sneakers, boots, galoshes, sandals, flip-flops, and slippers.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of
individual goods to a broader category, is exclusive and restricts the scope of
protection only to the goods specifically listed.
The contested clothing, namely, shirts, T-shirts, under shirts, night shirts, rugby shirts,
polo shirts, cardigans, jerseys, uniforms, scrubs not for medical purposes, smocks,
Decision on Opposition No B 2 430 745 page: 3 of 7
dress shirts, pants, trousers, slacks, jeans, culottes, cargo pants, stretch pants,
denim jeans, overalls, coveralls; clothing, namely, jumpers, jump suits, shorts, boxer
shorts, tops, stretch tops, tube tops, crop tops, tank tops, tankinis, halter tops, sweat
shirts, hooded sweat shirts, sweat shorts, sweat pants, wraps, warm-up suits, jogging
suits, track suits, play suits, blouses, skirts, dresses, sweaters, vests, fleece vests,
pullovers, snow suits; clothing, namely, parkas, capes, anoraks, ponchos, cloaks,
shrugs, jackets, reversible jackets, wind-resistant jackets, shell jackets, sports
jackets, golf and ski jackets, jean jackets, coats, heavy coats, over coats, blazers,
suits, turtlenecks, cloth ski bibs, swimwear, beachwear, tennis wear, surf wear, ski
wear, layettes, infant wear, infants sleepers, baby bibs not of paper; clothing, namely,
wrist bands, aprons, scarves, belts, suspenders, neckwear, ties, neckerchiefs, pocket
squares, ascots, underwear, thermal underwear, long underwear, briefs, swim and
bathing trunks, bras, thongs, G-strings; clothing, namely, singlets, socks,
loungewear, robes, underclothes, pajamas, sleepwear, night gowns, nighties,
lingerie, leg warmers, hosiery, pantyhose, body stockings, knee highs, leggings,
tights, gloves, mittens, rain slickers, rainwear are identical to the opponent’s clothing
for woman, man and children as they are included in this broad category.
The contested clothing, namely, caps, swim caps, berets, beanies, hats, visors,
headbands, sweat bands, headwear, ear muffs, bandanas are included in the broad
category of the opponent’s headgear. Indeed, sweat bands include those for the
head meaning there is an overlap. Therefore, they are identical.
The contested clothing, namely booties, footwear, shoes, sneakers, boots, galoshes,
sandals, flip-flops and slippers are identical to the opponent’s footwear (except
orthopaedic), either because they are identically contained in both lists or because
the opponent’s goods include the contested goods.
b) 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.
c) The signs
RED OCTOBERS
Earlier trade mark Contested sign
The relevant territory is Spain.
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
Decision on Opposition No B 2 430 745 page: 4 of 7
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 figurative mark consisting of the word element ‘october’
portrayed in bold red letters and, above this, the big bold red letters ‘O’ and ‘C’. The
word ‘OCTOBER’, due to its closeness to its equivalent in Spanish, ‘Octubre’, will be
understood by the relevant public as referring to the tenth month of the year. Contrary
to the opponent’s argument, the Opposition Division considers that the sign has no
element that could be considered dominant (visually eye-catching) given that both
elements are depicted in the same colour and take up the same amount of space
horizontally. The mere fact that ‘OC’ is at the top does not mean it is dominant.
The applicant argues that the element ‘October’ lacks distinctive character, or, at
best, it has a low degree of distinctiveness. In support of its arguments, the applicant
claims that the word ‘OCTOBER’, with reference to the relevant goods, clothing, is
evocative of the goods in the sense that they will be perceived as clothing used in
October or, in general, in Autumn. Contrary to the applicant’s opinion, though it is true
that the fashion industry usually creates clothing items according to the different
seasons, the so-called ‘collections’, it does not refer to particular months, but rather
to the season to which it is addressed (e.g. spring-summer collection and fall-winter
collection). Even if autumn includes the month of October this is too much of a
mental leap to reach the conclusion that ‘October’ is less distinctive for clothing.
Given the distance in this sense, the applicant’s argument is set aside and this
element is found to have an average degree of distinctive character as is the case
with ‘OC’ and neither is more distinctive than the other.
Regarding ‘OC’, the Opposition Division considers that despite the fusion of the
letters ‘O’ and ‘C’, this element will rather be perceived as a decorative element made
of the initial letters of the following word element, which is the element that the public
will turn to in order to refer to the earlier trade mark. Indeed, when confronted with a
trade mark, it is only natural for the public look for a ‘legible’ element that can be read
and pronounced as would be the case for ‘October’. Therefore, regarding the earlier
mark at issue the two letters are secondary to ‘October’.
The contested sign is ‘RED OCTOBERS’. The word ‘RED’ will be understood as
‘network’ by the relevant public and is, therefore, distinctive for the relevant goods.
The word ‘OCTOBERS’, although containing an ‘S’ at the end, will be also perceived,
as explained above, as the tenth month of the year and is also distinctive in relation
to the goods at issue. Both elements are on equal footing as concerns their
distinctive character.
The applicant argues that the relevant public will associate the contested sign to the
major event of the Russian Revolution which took place in October 1917. In view of
the Opposition Division, conceptually, the relevant public will not perceive such
meaning particularly given the meaning of the word ‘RED’ for the Spanish
consumers.
Visually, the signs coincide in the word ‘OCTOBER’ which has an independent role
in both signs. However, they differ in the initial element ‘OC’ and the graphic aspetcs
of the earlier mark, as described above, as well as in the initial word ‘RED’ and the
final letter ‘S’ at the end of the second element in the contested sign.
The first parts of the conflicting marks are different. While it is true that consumers
generally tend to focus on the first element of a sign when being confronted with a
trade mark it must be stressed that this argument cannot hold in all cases and does
Decision on Opposition No B 2 430 745 page: 5 of 7
not, in any event, cast doubt on the principle that the assessment of the similarity of
marks must take account of the overall impression created by them. In the present
case, although placed in second position in both signs, in addition to the lesser
impact of ‘OC’ in the earlier mark, the elements ‘OCTOBER’/’OCTOBERS’ are
distinctive and play an independent role in both signs.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‛OCTOBER’, present identically in both signs. The pronunciation differs in sound of
the word ‘RED’ and the ending letter ‘S’, both present in the contested sign which
have no counterparts in the earlier mark. The signs differ further in the sound of ‘OC’
of the earlier mark, if pronounced at all, which the Opposition Division deems highly
unlikely as the fusion on both letters will rather be perceived as a figurative element,
as explained above.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the relevant public will associate the words ‘OCTOBER’/’OCTOBERS’
in both signs with the meaning mentioned above and even ‘OC’ will be perceived as
a reference to ‘October’. Although the contested sign contains the word ‘RED’, that
will be associated with the concept of ‘network’, it does not create a major conceptual
difference as the combination of these two words does not convey a specific
meaning.
As the signs coincide in the concept of the same month, the signs are conceptually
similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 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.
e) Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or
services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion (see judgment
of 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on
the part of the public must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (see Canon, § 16).
Decision on Opposition No B 2 430 745 page: 6 of 7
In addition, the global assessment of the risk of confusion entails certain
interdependence between the factors taken into account and, in particular, between
the similarity of the trademarks and the similarity of the goods or services covered.
Accordingly, a low degree of similarity between those goods or services may be
offset by a high degree of similarity between the marks, and vice versa (see judgment
of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are identical and the degree of attention paid by the
relevant public is average.
The signs are visually, aurally and conceptually similar to an average degree due to
the coincidence in the element ‘OCTOBER’ which, despite being placed in second
position in both signs, plays an independent role in each of them.
Account should be taken of the fact that average consumers rarely have the chance
to make a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26.
Therefore, the Opposition Division considers that the differences between the signs
are not sufficient to offset their similarities and that there is a likelihood of confusion,
which includes the risk of association, on the relevant public and, therefore, the
opposition is well founded on the basis of the opponent’s Spanish trade mark
registration No 2 785 037.
It follows from the above that the contested trade mark must be rejected for all the
contested goods.
As the earlier right Spanish trade mark registration No 2 785 037 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 430 745 page: 7 of 7
The Opposition Division
Vanessa PAGE Jorge ZARAGOZA
GOMEZ
Marta GARCÍA COLLADO
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.