OPPOSITION No B 2 542 408

Maserati S.P.A., Via Ciro Menotti, 322, 41100 Modena, Italy (opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

Macon S.A., J. V. Foix nº 66, 08034 Barcelona, Spain (applicant]), represented by Salvador Saura Cuadrillero, C/Comte Borrell nº 182, ent.º 6ª, 08015 Barcelona, Spain (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 542 408 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 658 117 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 658 117. The opposition is now based on international trade mark registration No 1 007 749 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

The notice of opposition, as filed on 23/06/2015, was based on several earlier trade marks. In the course of the opposition proceedings, the opponent limited the earlier rights, used as basis of the opposition, to international trade mark registration No 1 007 749 designating the European Union. Therefore, it will be only this earlier right that will be examined below.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use.

In the present case the contested trade mark was published on 23/03/2015. The earlier trade mark is an international registration designating the European Union. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the European Union must be put into genuine use in the European Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 18/06/2010. Therefore, as the earlier mark has not been in force for five years before the date of publication of the contested trade mark, the request for proof of use is inadmissible, a fact that has been pointed out by the opponent and accepted by the applicant.

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 and services

The goods on which the opposition is based are the following:

Class 25: Clothing, footwear, headgear.

The contested goods and services are the following:

Class 25: Clothing, footwear and clothing accessories.

Class 35: Retailing in shops and sale via global computer networks of clothing, footwear and clothing accessories.

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 25

The contested goods clothing, footwear are identically present in the list of goods of the earlier mark. Accordingly, these goods are identical.

The contested goods clothing accessories is a general term, including among others goods that could be perceived either as clothing, or as accessories to clothing, for example belts, scarfs, cuffs, etc. Accordingly, clothing accessories is considered to overlap with clothing of the earlier mark. Hence, these goods are identical.

Contested goods in Class 35

It is established case law that retail services concerning the sale of particular goods are similar to some extent to these particular goods (05/05/2015, T-715/13, ECLI:EU:T:2015:256, ‘Castello’, § 33). Although the nature, purpose and method of use of the goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

Considering that the goods to be sold are identical to those of the opponent (see previous comparison of Class 25) accordingly, the contested services retailing in shops and sale via global computer networks of clothing, footwear and clothing accessories are similar to a low degree to the goods clothing, footwear of the earlier mark.

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.

It must also be noted that in order to assess the similarity of the goods and services, the group of goods and services protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks. (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71) The same principle should be applied to the assessment of the relevant public. Accordingly, the argument of the applicant that the consumers of the goods of the earlier mark are not the average consumers but a specialized group (club) interested in the opponent’s Maserati brand, and therefore – show higher than the average level of attention, may not be supported.

In the present case, the goods and services found to be identical or similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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 signs under comparison are figurative. An examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (see 27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In the present case, consumers will not dissect the figurative element into different units as this does not comport to the natural manner in which consumers perceive signs.

The opponent claims that both signs will be perceived as a trident device or more generally – as a symbol device. The applicant contends that the contested sign will be seen as a stylised crown device, while the earlier mark- as a trident. In support the applicant invokes the classification of the figurative elements of the signs under the Vienna Classification and in particular, that the contested sign is classified under subcategory ‘crowns’ of Category 24, while the earlier mark – under the subcategory ‘Neptune’s tridents’ of the same Category 24.

The Opposition Division does not accept the applicant’s argumentation in this regard. The opponent is correct in its submission that the Vienna Classification is used for administrative (classification) purposes only and is irrelevant for the comparison of two signs. The classification is done by trade mark experts, who analyse the signs taking into account all their details. This is not the case with the public at large, which perceives the signs as a whole. Accordingly, the Vienna Classification is not an indication on how the public perceives the sign, which has been confirmed by the Court of the European Union on several occasions (05/11/2008, T-304/07, ‘Arco stilizzato’, EU:T:2008:477, § 39; 10/11/2011, T-22/10, ‘E’, EU:T:2011:651, § 91).

As concerns the distinctive character of the devices represented above, given the absence of any relationship with the goods and services at issue, the elements of both signs are on equal footing and in both cases they are of an average distinctive character.

A conceptual comparison in the case at hand is possible to some extent. Due to the number of visual similarities of the signs, if the consumers at all associate them with some concept, such concept is likely to be identical for both of them. In particular, associating them with a trident or a crown is equally possible. It is not excluded that for part of the public the signs do not bring any semantic connotations.

Accordingly, the signs are considered conceptually identical for part of the public. For part of the public, for which the signs would not be associated with any meaning, the signs will not be conceptually similar.

Visually, both signs depict a three-pronged symbol with sharp points in black, featuring a very similar overall stylisation, proportions and orientation. The two side prongs of both signs are shorter than the one in the middle and are twisted at the top inwards to form an acute angle. The third prong is centrally positioned, longer than the side ones, and topped with a spike. The three prongs are positioned on a base consisting of two horizontal lines in the contested sign and three in the earlier mark. The first line stretches beyond the imaginary line between the outer edges of the side prongs, while the second one is shorter and centrally positioned below the first one. In addition, the earlier mark has a third line below the second, of the same length as the first one and a handle-looking short vertically-oriented part positioned below the three-line base, which do not have counterparts in the contested sign.

The visual perception of the signs at issue will not be sufficiently affected by their visual differences. Taking into account that consumers are usually unable to compare the signs side-by-side the relevant public will not be led by its examination to consider details such as the precise layout of the different representations of the prongs, whether they are slightly curved inwards or outwards, the exact difference in the length of the side and central prongs, the difference in the width of the prongs or whether there is a small hole in the central prong or not. These details are likely to be overlooked when the marks are not compared side-by-side. Consumers will focus on the overall impression created by the signs, and in particular on the underlying similarities, which have been outlined above, while the differences that the applicant has identified have a much lesser impact on the overall visual impression.

Furthermore, contrary to what the applicant claims, when visually perceiving the signs the general public is not likely to proceed to consider if they represent a crown, a trident or another symbol. It might be that for part of the consumers the signs represent a crown, for another – a trident and for others they may not raise any semantic connotations. This however would be relevant for the signs semantic comparison and not for their comparison from a visual perspective, where the signs are evaluated as seen through the eyes of the consumers.

Accordingly, the signs are visually similar to an average degree.

Aurally, it is not possible to compare the signs since purely figurative signs are not subject to a phonetic assessment.

As correctly pointed out by the opponent, a figurative mark lacking word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question. Therefore, it is not necessary to examine separately the phonetic perception of a figurative mark lacking word elements and to compare it with the phonetic perception of the earlier mark (judgment of 07/02/2012, T-424/10, (Representation of elephants in a rectangle), EU:T:2012:58, § 46).

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.

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as a result of its long-standing and intensive use. For the sake of completeness, it should be pointed that contrary to what the applicant claims, the opponent does not claim reputation of the earlier mark but enhanced distinctiveness of the mark. Accordingly, the evidence discussed below in this section d) are submitted to support that the mark has acquired enhanced distinctiveness, which is a factor of relevance for the global assessment, and not in relation to a reputation claim.  

The opponent has not specified the territory for which enhanced distinctiveness is claimed. In view of the fact however that the basis of the opposition is an international registration designating the European Union, enhanced distinctiveness in the European Union should be proven. The enhanced distinctiveness claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

In support of its claim the opponent submits news articles on the success of the opponent’s brand in 2014 (Exhibit 3), pictures of celebrities in front of Maserati cars (Exhibit 4) and print-outs of a website offering online clothing and footwear (Exhibit 5). None of this evidence however shows recognition of the mark on the part of the public in relation to the goods in question, i.e. goods of Class 25.

Most of the evidence submitted (Exhibit 3 and 4) relate to use of the earlier mark in connection with cars, what is actually confirmed by the opponent in its observations of 07/03/2016, where it states that the mark enjoys enhanced distinctiveness in relation to cars. Since this evidence is irrelevant for the case at hand, it will not be subject to further review.

A successful enhanced distinctiveness claim requires that the party proves that the mark in question enjoys recognition by the relevant public due to its intensive use in relation to the goods or services in question. The only piece of evidence related to clothing and footwear (i.e. Class 25) that is submitted by the opponent is contained in Exhibit 5 to its submission of 07/01/2016 and consists of print-outs from the website www.maseratistore.com offering for online sale clothes and footwear bearing the earlier sign. The site is shown to be available in different European Union languages. Presumably goods could be purchased and delivered to the respective countries. However, the print-outs do not contain information on the period in which this website was available. Further, no information is provided on actual visits of the websites by consumers, on realised sale through the website, sales volumes and even if at all any sales have been made through the website.  

Accordingly, the evidence is not capable of proving the claim of the opponent that due to its intensive use in the European Union in relation to clothing and footwear, at the time of filing of the contested sign, the earlier mark is recognised by a significant portion of the targeted European Union public in relation to such goods.

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.

5. Global assessment, other arguments and conclusion

In its observations the applicant argues that it owns two registrations, namely the Spanish registration No 540 103 and the European Union trade mark No 3 010 519 , which contain the same or similar figurative devices as the one of the contested sign. It is contended that these marks have coexisted with the opponent’s earlier mark for many years.

According to the case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which exists between two conflicting marks. However, that possibility can be taken into consideration only if the applicant duly demonstrates that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). In this respect, the argument of the opponent that the two invoked marks are different from the contested sign should be supported. The Spanish mark is a complex mark, containing a stylised symbol only resembling the contested mark and a word element positioned in two rectangular figures. The European Union trade mark contains a figurative element which is very similar to the contested sign and a word element. Accordingly, none of the marks is identical or even highly similar to the contested sign. In this respect, the argument of the applicant that the Spanish mark has evolved to the contested sign and will be perceived as such by consumers, is neither relevant to prove coexistence nor supported by any evidence.  

Given that the earlier marks of the applicant and the contested sign are not identical, the coexistence claim of the applicant must be rejected as unfounded. For the sake of completeness, it should be mentioned that the applicant failed to prove the existence of the rest of the required factors and in particular that the marks have actually coexisted on the relevant market (the submitted evidence is not capable of proving real use of the marks in relation to the relevant goods and services) nor coexistence for a period close to the filing date of the application (the most recent evidence relate to use of almost 20 years before the filing date of the application).

Additionally, the applicant refers to previous decisions of the Office and of the Court of the European Union to support its arguments. The previous decisions referred to by the applicant are not relevant for the present proceedings. In particular, the judgments of the General Court in cases T-488/07 and T-138/09 concern completely different factual situations, where figurative marks with word elements are compared with word marks. The decision of the Opposition Division on Opposition No B 1 220 724 is not relevant for the current case either, since it concerns comparison of two figurative marks containing a word element, and from the applicant’s submission it is not clear in what aspect it finds the decision relevant.

In the present case, the goods and services of the contested sign were found to be identical and similar to a low degree to the goods of the earlier mark, the signs were found to be visually similar to an average degree and conceptually identical for part of the public and for another public – it was found that the signs are not conceptually similar. The goods and services of the contested sign are directed at the public in general, which shows an average degree of attention. The earlier mark enjoys normal distinctiveness with respect to the goods of Class 25.  

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account is 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).

Further, 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 established average degree of visual similarity between the signs is particularly relevant when assessing the likelihood of confusion between them and this premise also extends to the related retail services.

In view of the above, the relevant factors support the finding that a likelihood of confusion may exist on the marketplace if the two signs are used for identical goods and retail services that concern those goods. Consumers could plausibly confuse the marks due to imperfect recollection or believe that the later mark is a ‘restyling’ of the earlier one.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 007 749 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Vanessa PAGE

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.