OPPOSITION No B 2 665 902
Peter Polo Diffusion, 108 Rue Francois Sibilli, 83990 Saint Tropez, France (opponent), represented by Myriam Angelier, 3 Place Félix Baret, 13006 Marseille, France (professional representative)
a g a i n s t
Gestión Integral de Tecnología y Logística S.L., C/ Johannes Gutenberg 6, Parque Tecnológico, 46980 Paterna, Spain (applicant), represented by Moya y Asociados IP S.L., Avda. Primado Reig 34-2, 46009 Valencia, Spain (professional representative).
On 11/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 665 902 is partially upheld, namely for the following contested goods:
Class 18: Trunks and travelling bags.
Class 25: Clothing; footwear; waist belts; headgear.
2. European Union trade mark application No 14 741 144 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 some of the goods of European Union trade mark application No 14 741 144, namely against some of the goods in Classes 18 and 25. The opposition is based on French trade mark registration No 1 420 141. 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: Leather ware, bags, travelling bags, luggage.
Class 25: Clothing, including footwear.
The contested goods are the following:
Class 18: Umbrellas; imitation leather; animal skins, hides; trunks and travelling bags.
Class 25: Clothing; footwear; waist belts; 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.
Contested goods in Class 18
Travelling bags are identically contained in both lists of goods.
The contested trunks are included in the broad category of the opponent’s luggage. Therefore, they are identical.
Umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod. The nature of these goods is very different from that of the opponent’s clothing and footwear in Class 25 and leather ware, bags, travelling bags, luggage in Class 18. They serve very different purposes (protection from rain versus covering/protecting the human body or transport of travel belongings). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.
Imitations of leather; animal skins and hides in Class 18 refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Class 25. Therefore, these goods are dissimilar. For the same reason these goods are not similar to the opponent’s goods in Class 18.
Contested goods in Class 25
Clothing and footwear are identically contained in both lists of goods.
The contested waist belts are included in the broad category of the opponent’s clothing. Therefore, they are identical.
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 considered to be average.
- The signs
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Earlier trade mark |
Contested sign |
The relevant territory is France.
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 consists of a figurative element of a polo player riding an elephant and holding a polo mallet behind its head depicted in white colour (light colour) and placed in a black (dark) rectangle. Underneath the rectangle, there is a verbal element ‘PETER POLO’ written in black standard font.
Since the relevant public will perceive the word ‘PETER’ as a name, it is considered to be distinctive in relation to the goods in question.
The element ‘POLO’ of the earlier mark will be understood by the relevant public as ‘a game of Eastern origin resembling field hockey, played on horseback with a long-handled mallet’ (Oxford dictionary). Bearing in mind the relevant goods, this element is weak for part of them, namely for ‛clothing’ and ‘footwear’, since these goods can be used for playing the sport of polo (18/05/2011, T-376/09, Polo Santa Maria, EU:T:2011:225). For the rest of the goods it is considered to be distinctive.
The figurative element in the earlier sign is distinctive enough as the depiction of the elephant rider wielding a polo mallet does not directly refer to the polo sport which is normally played on horses. This element is also the dominant element of the sign as it is visually the most eye-catching.
The contested sign consists of a figurative element of a polo player riding an elephant and holding a polo mallet next to his body. It is depicted in brown colour. The inclination of the elephant gives a sensation of a movement. Below the elephant there is the verbal element ‘PLAYPOLO’ written in brown colour, which can be easily dissected in the words ‘PLAY’ and ‘POLO’ because the element ‘POLO’ would be seen as a meaningful element when perceived together with the figurative element of the mark.
As regards the element ‘PLAY’, it is considered distinctive in relation to the relevant goods since the relevant public will not associate this word with any meaning.
The element ‘POLO’ of the contested sign is, because of the same reasoning as in the earlier mark, considered weak for some of the contested goods, namely ‘clothing’; ‘footwear’; ‘waist belts’ and ‘headgear’. For the rest of the goods, namely ‘trunks and travelling bags’, the element is distinctive.
Similarly, because of the same reasoning as in the earlier mark, the figurative element of the contested sign, which consists of a polo player on an elephant, is distinctive enough in relation to the goods in question.
Visually, the signs coincide in the word ‘POLO’ which, as described above, is considered weak only in relation to some of the goods in question. Although the distinctive figurative elements of the marks are represented differently in their details, the overall depiction of these elements is similar to a certain extent, as each figurative element depicts a polo player riding an elephant, turned to the left. However, the marks differ in the word ‘PETER’ in the earlier mark and the word ‘PLAY’ in the contested sign. Considering the relevant similarities in their figurative elements (which in the case of the earlier mark is the dominant element) and the coincidence in the string of letters ‘POLO’, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‘POLO’ present identically in both signs and the letter ‘P’ of the next word element of the marks. As explained above, this word is distinctive only for a part of the goods in question, while for the rest of them it is considered weak. The pronunciation differs in the sound of the letters ‘*ETER’ of the earlier sign and ‘*LAY’ of the contested sign. In the view of the foregoing, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs coincide in the word ‘POLO’ and the highly similar figurative elements, they will refer to the same concept of the ‘game of polo played on elephants’. Therefore, they are conceptually similar to a high degree.
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 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
As has been concluded above, the contested goods in Class 18 and 25 were found identical, similar or dissimilar to those of the earlier mark and are directed to the public at large whose level of attention is average.
The signs are similar to the extent that they coincide in the word ‘POLO’ which was found weak only for part of the relevant goods in both signs. However, they also coincide in their highly similar and distinctive figurative elements, which introduce the same concept in both marks. The main striking difference between the signs is in the additional word ‘PETER’ in the earlier mark and ‘PLAY’ in the contested sign. However, it is not sufficient to enable the public not to confuse or associate the signs. The visual similarities are very striking and will certainly catch consumers’ attention.
Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs caused by the figurative elements are particularly relevant when assessing the likelihood of confusion between them.
Considering the high degree of conceptual similarity and the average degree of visual and aural similarity between the signs, it is concluded that the relevant public may believe that the goods in question marketed with the signs in question come from the same undertaking or from economically linked undertakings. Therefore, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the public.
Therefore, the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 1 420 141. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at dissimilar goods cannot be successful.
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 will 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
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Boyana |
Begoña |
Pedro |
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.