OPPOSITION DIVISION
OPPOSITION No B 2 484 726
Jockey International, Inc., 2300 60th Street, Kenosha, Wisconsin 53141-1417,
United States of America (opponent), represented by Grünecker Patent- und
Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional
representative)
a g a i n s t
Giovanna Squizzato, Via Martiri del Lavoro di Marcinelle 10, 37060 Lugagnano di
Sona (Verona), Italy (applicant), represented by Ruffini Ponchiroli e Associati
S.R.L., Via Caprera 6, 37126 Verona, Italy (professional representative).
On 21/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 484 726 is upheld for all the contested goods, namely:
Class 25: Clothing; footwear; headgear.
2. European Union trade mark application No 13 342 969 is rejected for all the
contested goods. It may proceed for the remaining goods.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of European Union trade
mark application No 13 342 969 for the word mark ‘JEKEY’, namely against all the
goods in Class 25. The opposition is based on European Union trade mark
registration No 191 494 and German trade mark registration No 946 188, both for the
word mark ‘JOCKEY’. 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
Decision on Opposition No B 2 484 726 page: 2 of 5
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 more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registration No 191 494.
a) The goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Articles of underclothing; nightwear; leisurewear; sportswear and
swimwear; vests, pants; jerseys; sweaters; pullovers; shirts; sweat shirts; sports
shirts and T-shirts; shorts; jackets; pyjamas and housecoats; hats and caps.
The contested goods are the following:
Class 25: Clothing; footwear; headgear.
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.
The contested clothing includes, as a broader category, the opponent’s articles of
underclothing. Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
The contested headgear includes, as a broader category, the opponent’s hats and
caps. Since the Opposition Division cannot dissect ex officio the broad category of
the contested goods, they are considered identical to the opponent’s goods.
The contested footwear is similar to the opponent’s sweaters. They have the same
purpose, distribution channels and producers, and they target the same consumers.
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 or similar are directed at the
public at large.
The degree of attention is considered average.
Decision on Opposition No B 2 484 726 page: 3 of 5
c) The signs
JOCKEY JEKEY
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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
In territories where English is spoken and understood, the earlier sign will be
understood as ‘a person who rides horses in races, especially as a profession or for
hire’ (information extracted from Collins Online Dictionary on 10/11/2017 at
https://www.collinsdictionary.com/dictionary/english/jockey). It will be understood with
the same meaning in some other territories where English is not spoken and
understood. However, as it is meaningless in, for example, territories where Italian is
spoken and understood, the Opposition Division finds it appropriate to focus the
comparison of the signs on the Italian-speaking part of the public.
Both signs are word marks, ‘JOCKEY’ and ‘JEKEY’. As they are fanciful words that
are meaningless for the relevant public, they have an average degree of
distinctiveness.
Visually, the earlier sign consists of six letters and the contested sign consists of five
letters. They coincide in the sequence of the letters ‘J*KEY’. However, they differ in
the second and third letters, ‘OC’, of the earlier mark and the second letter, ‘E’, of the
contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, both signs will be pronounced in two syllables. They coincide in the
pronunciation of their second syllables. Despite the presence of an additional letter
‘C’ in the earlier sign, in accordance with Italian pronunciation rules the second
syllables of the signs will be pronounced identically. The signs differ in the
pronunciation of their first syllables. However, the difference results only from the
pronunciation of the vowels ‘O’ and ‘E’, because the first letter, ‘J’, is the same.
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.
Decision on Opposition No B 2 484 726 page: 4 of 5
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
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.
In the present case, the goods are partly identical and partly similar. The signs are
visually similar to an average degree and aurally highly similar. They have the same
first letter, ‘J’, and the same ending, ‘KEY’. The differences between the signs, which
are confined to the letters ‘OC’ in the earlier sign and the letter ‘E’ in the contested
sign, do not create different overall impressions from a visual point of view, and from
an aural point of view the signs are still more similar. Therefore, the similarities
between the signs prevail over their differences.
Account must also 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).
The differences between the signs, which are not striking and occur in the middle of
the signs, are not likely to be recalled by consumers with an average degree of
attention when they encounter the goods in question. Therefore, the overwhelming
similarities between the signs would lead the relevant public to think that these goods
come from the same undertaking or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the Italian-
speaking part of the public. As stated above in section c) of this decision, a likelihood
of confusion for only part of the relevant public of the European Union is sufficient to
reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 191 494. It follows that the contested trade mark
must be rejected for all the contested goods.
Decision on Opposition No B 2 484 726 page: 5 of 5
As the earlier European Union trade mark registration 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 right
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, she 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.
The Opposition Division
Martin EBERL Alexandra APOSTOLAKIS Denitza STOYANOVA-
VALCHANOVA
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.