OPPOSITION No B 2 751 165
Aston Martin Lagonda Limited, Banbury Road, Gaydon, Warwick CV35 ODB, United Kingdom (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford’s Inn, London EC4A 1BL, United Kingdom (professional representative)
a g a i n s t
Amaro Marquez Arrabal, c/ Federico Garcia Lorca, 16, 18120 Granada, Spain (applicant), represented by Plaza y Cía, Calle Orense, 64 1ºD, 28020 Madrid, Spain (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 751 165 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 372 154. The opposition is based on European Union trade mark registration No 10 481 901 and European Union trade mark registration No 14 563 811. 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 opposition is based on the two earlier European Union trade mark registrations referenced above. The Opposition Division finds it appropriate to examine the opposition in relation to both of these marks at the same time.
- The goods and services
The goods and services on which the opposition is based are the following:
EU trade mark registration No 10 481 901 (ER1):
Class 35: Dealerships for new or pre-owned motor vehicles; advertising; marketing; publicity services; business management; business administration; office functions; retail services connected with the sale of land, water and air vehicles, apparatus for locomotion by land, air or water, engines, boats, yachts, beauty products, toiletries, machines for household use, hand tools, optical goods, cameras, domestic electrical and electronic equipment, including white goods, jewellery, clocks, watches, stationery, publications, leather goods, luggage, furniture, household containers and utensils, furnishings, textiles, clothing, footwear, headwear, haberdashery, toys and games, sports equipment, foodstuffs, drinks, tobacco products, sporting goods, kitchen utensils and equipment, household linens, artificial plants and trees, glassware, porcelain and earthenware, household paper products, laundry preparations, soaps and cleaning products, polishing products, cosmetics, personal care products, pharmaceutical preparations, vitamins, nutritional supplements, gardening products and equipment, pet food and pet care products, power and hand tools, automotive goods and gasoline, household and outdoor furniture, office furniture and equipment, computers and computer peripherals, computer software and hardware, compact discs and DVDs, consumer electronics, batteries, luggage, jewellery, watches, clocks, and parts and fittings for the aforesaid goods; the bringing together for the benefit of others of a variety of business, financial, real estate, insurance, telecommunication, travel, ticketing and reservation services; consultancy and information services relating to all the aforesaid.
EU trade mark registration No 14 563 811 (ER2):
Class 25: Clothing, namely, scarves, cashmere scarves, ties, t-shirts, polo shirts, jackets, hooded jacket and sweatshirts, sweaters, warm-up suits, blouses, slacks, hosiery, gloves, mittens; cashmere mittens; parkas, bibs, coveralls, pants, shirts, vests, socks; cashmere socks; coats and special-purpose clothing not covered by other classes, sports clothing, including snow boarding clothing, ear muffs, visors, wet suits for surface watersports, wet suits for use whilst water skiing, windsurfing or wakeboarding, swimming suits; footwear, namely, shoes, golf shoes, driving shoes, boots; headgear, namely, hats and caps, baseball caps, golf hats; cashmere hats; bibs {not of paper}; parts and fittings for the aforesaid goods; winter face masks; leather belts {clothing}; suspenders {braces}; suspender belts for men.
The contested goods and services are the following:
Class 25: Clothing, footwear, headgear.
Class 35: Advertising; business management; business administration; office functions.
Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 are directed at the public at large and the professional public.
The degree of attention is considered to be average.
- The signs
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Earlier trade marks |
Contested sign |
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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 marks are figurative marks consisting of circular shapes with black outer and inner borders which contain the superimposed letters ‘A’ and ‘M’, written in black upper-case stylized lettering. The letters share their central sections (i.e. the central, downward facing section of the letter ‘M’ doubles as the central, connecting section of the letter ‘A’, or vice-versa). The four outer corners of the letter ‘M’ touch the black inner border of the circular shapes, as do the three outer corners of the letter ‘A’.
The contested sign is a figurative mark containing the word elements ‘AMARO’ and ‘JEANS’, written in dark blue upper-case stylized lettering. A figurative element consisting of the superimposed letters ‘A’ and ‘M’, also written in dark blue upper-case stylized lettering, is located above the word elements. The letters share their outer base (i.e. the two outer vertical lines of the letter ‘M’ and the two outer perpendicular lines of the letter ‘A’ are connected at the bottom).
The earlier marks and the contested sign have no elements that could be considered clearly more dominant than other elements. Furthermore, the earlier marks have no meaning for the relevant public and are, therefore, distinctive.
The word element ‘AMARO’ of the contested sign will be understood by parts of the relevant public as either a given name/surname or the Italian herbal liqueur commonly drunk as an after-dinner digestive. However, for the remaining part of the public, it has no meaning. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive with regard to all the relevant public.
Furthermore, the word element ‘JEANS’ of the contested sign will be understood by a significant part of the relevant public as referring to trousers made of denim or other resistant cotton fabric and therefore is weak for this part of the public in relation to the relevant Class 25 goods. However, for the remaining part of the relevant public, it has no meaning and is distinctive.
The figurative element of the contested sign consisting of the stylised and superimposed letters ‘A’ and ‘M’ will be perceived by the relevant public as alluding to the ‘AMARO’ word element, given that the first two letters of this element are also ‘A’ and ‘M’. It is noted that this allusion has no counterpart in the earlier marks. Therefore, the main indicator of commercial origin of the contested sign is the word element ‘AMARO’.
Visually, the signs differ due to the presence of the word elements ‘AMARO JEANS’ of the contested sign, which have no counterparts in the earlier marks, and the different stylization of their respective figurative elements. Indeed, although all the marks feature superimposed letters ‘A’ and ‘M’, there are important differences in their depiction, as described above. The earlier marks consist of circular shapes with black outer and inner borders that have no equivalent in the contested sign. Furthermore, the superimposed letters ‘A’ and ‘M’ of the earlier marks share their central sections and their outer corners touch the black inner borders of the circular shapes, while the superimposed letters ‘A’ and ‘M’ of the contested sign share their outer base.
As was stated above, the main indicator of commercial origin of the contested sign is the word element ‘AMARO’, given that the relevant public will recognize the superimposed letters in the sign as an allusion to this word element. Additionally, 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).
Therefore, the signs are visually similar to a lower than average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘A’ and ‘M’, present identically in both signs. However, the pronunciation differs in the additional word elements ‘AMARO’ and ‘JEANS’ of the contested sign, which have no counterparts in the earlier marks. This is especially important as the distinctive word element ‘AMARO’ is the main indicator of commercial origin of the contested sign.
Therefore, the signs are aurally similar to a very low degree.
Conceptually, although all the marks feature superimposed letters ‘A’ and ‘M’, there are important differences in their depiction, as described above. Furthermore, the contested sign has the additional word elements ‘AMARO’ and ‘JEANS’, with the former being distinctive with regard to all the relevant public while the latter is weak for the part of the public that will recognize the word as referring to trousers and distinctive for the remaining part of the public.
Additionally, the superimposed letters of the contested sign will be perceived by the relevant public as alluding to the element ‘AMARO’. As was indicated above, this allusion has no counterpart in the earlier marks.
Therefore, the signs are conceptually dissimilar.
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 marks 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. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
- 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.
As has been mentioned above, the contested goods and services are assumed to be identical to the opponent’s goods and services while the signs are visually similar to a lower than average degree, aurally similar to a very low degree and conceptually dissimilar.
In the present case, the similarities between the signs concern figurative elements featuring superimposed letters ‘A’ and ‘M’. However, these elements have important differences in their depiction, as was concluded above in section c) of this decision. Furthermore, the contested sign contains the word elements ‘AMARO’ and ‘JEANS’, with the former being distinctive with regard to all the relevant public while the latter is weak for the part of the public that will recognize the word as referring to trousers and distinctive for the remaining part of the public. These additional elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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
| Monika CISZEWSKA | José Alexandre DE PAIVA ANDRADE TEIXEIRA | Ewelina SLIWINSKA |
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.