OPPOSITION No B 2 232 984

The Polo/Lauren Company L.P., 650 Madison Avenue, New York, New York 10022 ,

United States (opponent), represented by Mishconde Reya LLP, Africa House 70 Kingsway, London, London WC2B 6AH, United Kingdom, (professional representative)

a g a i n s t

Li Jing Zhou, C/ Bembibre, 2 Local 18, 28947 Fuenlabrada (Madrid), Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via 69 -5° Of. 510, 28013 Madrid, Spain, (professional representative)

On 02/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 232 984 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 of European Union trade mark application No 11 777 109. Some of the contested goods in Classes 14, 18 and 25 were subsequently rejected in a decision of 09/09/2015 by the Boards of Appeal in parallel case R 2519/2014-5, allowing the application to proceed for the following goods in Class 18: Whips, harness and saddlery. It is against these goods that the current opposition remains directed.

The opposition is based on, inter alia,

• European trade mark No 8 612 871 in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR;

• European trade mark registration No 4 049 201 in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR;

• European trade mark No 4 164 976 in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR;

• European trade mark No 5 824 685 in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR;

• European trade marks No 4 049 334 and No 4 164 844, ‘POLO’ (word marks), in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR;

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR inter alia with respect to some well-known marks and also Article 8(4) EUTMR in relation to various earlier non registered marks and signs of more than mere local significance. However he did not file any observations with respect to Article 8(4) 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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registrations No 8 612 871, No 4 049 201, No 4 164 976, No 5 824 685, No 4 049 334 and No 4 164 844.

1. The goods

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

European trade mark registration No 8 612 871:

Class 8: Hand tools and implements (hand-operated); cutlery; Side arms; razors. Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments. Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; book binding material; photographs; Stationery; adhesives for stationery or household purposes; Artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; Printing blocks.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; Umbrellas, parasols and walking sticks; whips, harness and saddlery. Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers. Class 25: Clothing, footwear, headgear.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35: Advertising, business management, Business administration, Office functions, retail store services relating to hand tools and implements (hand-operated), cutlery, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewellery, precious stones, horological and chronometric instruments, paper, cardboard and goods made from these materials, not included in other classes, printed matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers' type, printing blocks, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, not included in other classes, bed and table covers, clothing, footwear, headgear, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), games and playthings, gymnastic and sporting articles, decorations for Christmas trees.

The earlier European Union trade mark No 8 612 871 is registered for the entire class headings of Classes 18 and 25 of the Nice Classification. It was filed on 13/10/2009. According to the Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9^th edition.

European trade mark registration No 4 049 201:

Class 9: Binoculars, eyeglass cases, pince-nez, pince-nez cases, pince-nez chains, pince-nez cords, eyeglass chains, eyeglass frames, eyeglass cords, eyeglasses, spectacle cases, spectacle frames, spectacle glasses, sunglass cords, sunglass frames, sunglass chains, and sunglasses.

Class 18: Leather and imitations of leather, handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (earthenware) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrellas, umbrella covers, and wallets; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, baskets, bottle, jar and magazine racks; coat hangers and coat stands; clothing covers(wardrobes); cushions and pillows; wall plaques, jewellery cases, statuettes and wickerwork, armchairs, bassinets, beds, bedding, bedsteads of wood, benches, battle racks, chairs, chest of drawers, chests, coat stands, crates, deck chairs, desks, dinner wagons, divans, dressing tables, easy chairs, fans for personal use, foot stools, frames, furniture, hampers, hat stands, magazine racks, mannequins, mattresses (spring), mirrors, mirror tiles, newspaper display stands, pedestals, picture frames, pillows, plaques, rattan, settees, showcases, sideboards, sleeping bags for camping, sofas, statues of wood, wax, plaster or plastic, statuettes of wood, wax, plaster or plastic, stools, tables, tea carts, tea trolleys, trays, umbrella stands, wickerwork, wind chimes, works of art, of wood, plaster or plastic.

Class 21: Household or kitchen utensils and containers, non-electric (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes); brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), tableware of glass, porcelain and earthenware, drinking vessels of glass and of plastic, mugs of ceramics, bowls, containers for food and drinks, trays not of precious metal, signboards of porcelain or glass; non-electric household or kitchen utensils and containers, spatulas, strainers, basting spoons for kitchen use, basins, thermal insulated containers for beverages, blenders, bottle openers, soap boxes, domestic bread baskets, perfume burners, butter dishes, cake molds, cheese-dishes and cheese-dish covers, cooking pots, decanters, deep fryers; soap dispensers; boxes for dispensing paper towels, egg cups; fruit cups; fruit pressers, garbage cans, ice cube molds, kettles, kitchen mixers, lunch boxes, manual mixers for cocktails, mixing spoons, napkin rings not of precious metal, frying pans, salt and cocktail shakers, stew pans, sugar bowls, tea infusers not of precious metals toothpicks; combs and sponges, hair combs, sponges for household purposes; brushes, cosmetic brushes, nail brushes; brush making materials, steel wool for cleaning; beverage glassware, household non-electric whisks, ceramics, glassware, porcelain, earthenware, perfume sprayers and vaporizers and vases, beer mugs, bottle openers, bread bins, bread boards, footwear brushes, butter dishes, candelabra, candle extinguishers, candle rings, candlesticks, cocktail stirrers, coffee services, coffeepots, comb cases, combs, cookie jars, cooking pots, cooking utensils, corkscrews, crockery, cups, decanters, dishes, drinking flasks, drinking glasses, egg cups, figurines, fruit cups, glass bowls, glassware, goblets, ice buckets, jugs, kettles, liqueur sets, pans, pepper mills, perfume sprayers, perfume vaporizers, pitchers, porcelain ware, pots, poultry rings, salad bowls, salt cellars, salt shakers, saucepans, shaving brushes, soap boxes, soap holders, soup bowls, statues of porcelain, terra-cotta or glass, statuettes of porcelain, terra-cotta or glass, sugar bowls, table plates, tableware, tankard, teapots, toilet brushes, toilet cases, toilet utensils, toothbrushes, toothpicks, trays, urns, utensils for household purposes, vases.

Class 24: Fabrics for textile use; bed and table covers, blankets, bath linen, household linen, curtains, bed linen, duvets, travelling rugs, textile piece goods for making up into the aforesaid goods bed blankets, bed cloths, bed covers, bedspreads, blankets, coasters, eider downs, face towels, furniture coverings, flags, handkerchiefs, linen, mattress covers, pillow shams, pillowcases, place mats, (textile), quilts, serviettes (textile), table cloths, table linen, table napkins, table mats, table runners, towels, travelling rugs, upholstery (fabrics), and wall hangings.

Class 25: Clothing, underclothing; shoes and footwear; headgear; clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, shirts, wraps, jerseys, t-shirts, shirts, sweaters, waistcoats, blouses, dresses, jumpers, sleepwear, robes, warm-up suits, sweatshirts, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear; footwear for men, women, children, and infants shoes, sneakers, sandals, slippers, boots; headgear for men, women, children, and infants hats, headbands, earmuffs, caps, sweaters, shirts, including knitshirts, dress shirts, sports shirts, sweatshirts and T shirts; jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, tops, vests, hosiery, scarves, pajamas, underwear, kilts, mufflers, shawls; footwear, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear.

European trade mark registration No 5 824 685:

Class 3: Perfumes, eaux de toilette; bath and shower gels and salts not for medical purposes; toilet soaps; deodorants for personal use; cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations; shampoos; gels, mousses, balms and preparations in aerosol form for hairdressing and haircare; hair lacquers; hair-colouring and hair-decolorizing preparations; preparations for waving and setting hair; essential oils.

Class 9: Binoculars, eyeglass cases, pince-nez, pince-nez cases, pince-nez chains, pince-nez cords, eyeglass chains, eyeglass frames, eyeglass cords, eyeglasses, spectacle cases, spectacle frames, spectacle glasses, sunglass cords, sunglass frames, sunglass chains, and sunglasses.

Class 18: Leather and imitations of leather, handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (leatherware) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrellas, umbrella covers, and wallets; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, baskets, bottle, jar and magazine racks; coat hangers and coat stands; clothing covers (wardrobes); cushions and pillows; wall plaques, statuettes and wickerwork, armchairs, bassinets, beds, bedding, bedsteads of wood, benches, bottle racks, chairs, chest of drawers, chests, coat stands, crates, deck chairs, desks, dinner wagons, divans, dressing tables, easy chairs, fans for personal use, foot stools, frames, furniture, hampers, hat stands, magazine racks, mannequins, mattresses (spring), mirrors, mirror tiles, newspaper display stands, pedestals, picture frames, pillows, plaques, rattan, settees, showcases, sideboards, sleeping bags for camping, sofas, statues of wood, wax, plaster or plastic, statuettes of wood, wax, plaster or plastic, stools, tables, tea carts, tea trolleys, trays, umbrella stands, wickerwork, wind chimes, works of art, of wood, plaster or plastic.

Class 21: Household or kitchen utensils and containers, non-electric (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes); brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), tableware of glass, porcelain and earthenware, drinking vessels of glass and of plastic, mugs of ceramics, bowls, containers for food and drinks, trays not of precious metal, signboards of porcelain or glass; non-electric household or kitchen utensils and containers; spatulas, strainers, basting spoons for kitchen use, basins, thermal insulated containers for beverages, blenders [non-electric], bottle openers, soap boxes, domestic bread baskets, perfume burners, butter dishes, cake molds, cheese-dishes and cheese-dish covers, cooking pots, decanters, deep fryers [non-electric], soap dispensers, boxes for dispensing paper towels, egg cups, fruit cups, fruit pressers, garbage cans, ice cube molds, kettles [non-electric], kitchen mixers [non-electric], lunch boxes, manual mixers for cocktails, mixing spoons, napkin rings not of precious metal, frying pans, salt and cocktail shakers, stew pans, sugar bowls, tea infusers not of precious metals, toothpicks, combs and sponges, hair combs, sponges for household purposes, brushes, cosmetic brushes, nail brushes, brush making materials, steel wool for cleaning; beverage glassware, household non-electric whisks, ceramics, glassware, porcelain, earthenware, perfume sprayers and vaporizers and vases, beer mugs, bottle openers, bread bins, bread boards, footwear brushes, butter dishes, candelabra, candle extinguishers, candle rings, candlesticks, cocktail stirrers, coffee services, coffeepots, comb cases, combs, cookie jars, cooking pots, cooking utensils, corkscrews, crockery, cups, decanters, dishes, drinking flasks, drinking glasses, egg cups, figurines, fruit cups, glass bowls, glassware, goblets, ice buckets, jugs, kettles, liqueur sets, pans, pepper mills, perfume sprayers, perfume vaporizers, pitchers, porcelain ware, pots, poultry rings, salad bowls, salt cellars, salt shakers, saucepans, shaving brushes, soap boxes, soap holders, soup bowls, statues of porcelain, terra-cotta or glass, statuettes of porcelain, terra-cotta or glass, sugar bowls, table plates, tableware, tankard, teapots, toilet brushes, toilet cases, toilet utensils, toothbrushes, toothpicks, trays, urns, utensils for household purposes, vases.

Class 24: Fabrics for textile use; bed and table covers, blankets, bath linen, household linen, curtains, bed linen, duvets, travelling rugs, textile piece goods for making up into the aforesaid goods bed blankets, bed cloths, bed covers, bedspreads, blankets, coasters, eider downs, face towels, furniture coverings, flags, handkerchiefs, linen, mattress covers, pillow shams, pillowcases, place mats, (textile), quilts, serviettes (textile), table cloths, table linen, table napkins, table mats, table runners, towels, travelling rugs, upholstery (fabrics), and wall hangings.

Class 25: Clothing, underclothing; shoes and footwear; headgear; clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, shirts, wraps, jerseys, t-shirts, shirts, sweaters, waistcoats, blouses, dresses, jumpers, sleepwear, robes, warm-up suits, sweatshirts, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear; footwear for men, women, children, and infants shoes, sneakers, sandals, slippers, boots; headgear for men, women, children, and infants hats, headbands, earmuffs, caps, sweaters, shirts, including knitshirts, dress shirts, sports shirts, sweatshirts and T-shirts; jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, tops, vests, hosiery, scarves, pajamas, underwear, kilts, mufflers, shawls; footwear, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear.

European trade mark registration No 4 049 334:

Class 18: Leather and imitations of leather, handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (leatherware) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrellas, umbrella covers, and wallets; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, underclothing; shoes and footwear; headgear; clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, wraps, jerseys, sweaters, waistcoats, dresses, jumpers, sleepwear, robes, warm-up suits, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear; footwear for men, women, children, and infants shoes, sneakers, sandals, slippers, boots; headgear for men, women, children, and infants hats, headbands, earmuffs, caps, sweaters, dress shirts, blouses; jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, vests, hosiery, scarves, pajamas, underwear, kilts, mufflers, shawls; footwear, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear; but not including shirts other than dress shirts, and not including garments with polo necks, and not including any of the aforesaid goods being sports clothing intended for use in playing polo.

European trade mark registration No 4 164 844 and No 4 164 976:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments, watches.

The contested goods, after the decision of the Boards of Appeal mentioned above, are the following:

Class 18: Whips, harness and saddlery.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 ‘Whips, harness and saddlery’ are identically contained in the lists of goods of the earlier marks No 8 612 871, No 4 049 201, No 5 824 685 and No 4 049 334. Therefore they are identical.

As regards earlier rights No 4 164 976 and No 4 164 844, the goods in Class 14 covered by these trade mark are dissimilar to all the contested goods because their nature and purpose is completely different, as well as the distribution channels and the producers.

Article 8(1)(b) CTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).

According to Article 8(1)(b) CTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected as far as it is based on earlier rights No 4 164 976 and No 4 164 844.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The Opposition Division will therefore first examine the opposition with respect to earlier trade marks No 8 612 871, No 4 049 201, No 5 824 685 and No 4 049 334.

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.

In the present case, the goods found to be identical are directed at the public at large for instance people taking riding classes and at a specialist public, namely professional equestrians (saddlery, etc.). Harnesses and saddlery are specialised goods intended for equestrians, who choose these goods with particular care. They are also at one hand cheap products like a whip and also high-priced goods as saddles can easily cost several thousands of Euros.

It follows that the attention of the public varies from average to high.

3. The signs

1) No 4 049 201 2) No 8 612 871 3) No 5 824 685 POLO 4) No 4 049 334
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Earlier mark 1) is a figurative mark composed of a black device, namely a silhouette of a polo player on horseback. The polo player appears to be galloping and his polo mallet is held up, ready to strike the ball. Earlier mark 2) contains the silhouette described above of a polo player between the verbal elements, ‘POLO’ and ‘RALPH LAUREN’, in standard upper case typeface. Earlier mark 3) consists of three galloping polo players, striving for the ball in full canter. Earlier mark 4) is a word mark, ‘POLO’.

The contested mark is a composite mark composed of a black silhouette of a polo player on a horseback, in motion, with a mallet in an uplifted position, in his right hand. The polo player is portrayed in the centre of the wording ‘POLO CLUB’, written in upper typeface, below it and above it the wording ‘Patrick Mc Lee’ written in a slightly bend manner. These verbal elements are lightly stylised and in upper and lower case typeface.

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier marks have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

It is considered that the image of a horse rider wielding a polo mallet and the word/s ‘POLO’ and/or ‘CLUB’ have:

• low inherent distinctiveness for whips, harness, and saddlery in Class 18, given their close connection to the playing of polo.

Visually, earlier marks 1), 2) and 3) and the contested sign coincide in that they all contain a black silhouette of a polo player on horseback, in motion, with the polo mallet in an uplifted position in his right hand. Earlier mark 2) further coincides with the contested sign in the verbal element, ‘POLO’, written in upper case. Earlier mark 3) is less similar to the contested sign as it contains additional figurative elements, namely two more polo players – in total three galloping polo players – which are depicted with different postures and different positions of the horses. Earlier mark 4) is entirely included in the contested sign as one of its verbal elements.

Earlier marks 1), 2) and 3) and the contested sign differ in the details of the figurative elements — mainly in that the angles from which the horses and riders are represented and the postures in which the horses and riders are depicted differ — as well as in their word elements, ‘RALPH LAUREN’ of earlier mark 2) versus ‘Patrick Mc Lee’ and ‘CLUB’. Earlier mark 3) differs inasmuch it has no verbal elements at all and consists of three polo players instead of one. Earlier mark 4) differs from the contested sign in all the additional elements to ‘POLO’, namely the verbal elements ‘Patrick Mc Lee’ and ‘CLUB’, and the depiction of a polo player.

Therefore the marks are considered visually similar to a low degree.

Aurally, earlier marks 1) and 3) are purely figurative marks. Purely figurative marks are not subject to a phonetic assessment. Therefore it is not possible to compare them aurally with the contested sign.

As for earlier marks 2) and 4), irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘POLO’ present identically in all signs, and to that extent the signs are aurally similar to a low degree since ‘POLO’ is only a small part of these signs. The pronunciation differs in the sound of the words ‘RALPH LAUREN’ of earlier mark 2) and ‘Patrick Mc Lee’ and ‘CLUB’ of the contested sign.

Conceptually, the word ‘POLO’ could refer to a) ‘a game similar to field hockey but played on horseback using long-handled mallets and a wooden ball’; b) ‘a collar on a garment, worn rolled over to fit closely round the neck’, or c) ‘a garment, esp. a sweater, with such a collar’ (information extracted from Collins Dictionaries on 26/04/2016 at http://www.collinsdictionary.com/dictionary/english/polo), and will be understood throughout the relevant territory.

Earlier marks 1), 2) and 3) and the contested sign consist of the device of a polo player on horseback and therefore refer directly to the same concept, that is to say, a polo player on horseback holding a mallet. They will be further linked to the concept of the game of polo by the word ‘POLO’ contained in earlier marks 2) and 4) and the word/s ‘POLO’ and/or ‘CLUB’ contained in the contested sign.

The words ‘Patrick Mc Lee’ in the contested sign will be recognised throughout the European Union as a name and a surname, most likely of Irish or Scottish origin. The consumer will assume that it is a reference to the name of the polo club in question or a famous player who plays or used to play in this club. The word ‘CLUB’ refers to a group or association of people with common aims or interests, and will be most likely also be understood throughout the European Union.

The marks differ in the additional concepts of: ‘Ralph Lauren’, which will be perceived as a name or as a name and a surname.

The signs are therefore considered conceptually similar to a low degree.

Taking into account the abovementioned visual, aural and conceptual coincidences and differences, it is considered that the signs under comparison are similar to a low degree because they share the device of a polo player respectively the word ‘POLO’, which is considered to have low distinctive character with respect to the contested goods.

4. Distinctiveness of the earlier marks

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 marks have a reputation and enjoy a high degree of distinctiveness as result of their long standing and intensive use in all European Member States in connection with all the goods for which they are registered. This 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. Indeed, 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 (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).

From the evidence submitted, namely Interbrand reports, sales figures, extracts from catalogues, printouts of online stores, financial data concerning marketing and promotion expenditure, advertisements, copies of promotional material, newspaper articles mentioning the Ralph Lauren Company, printouts of webpages showing the locations of Ralph Laurens factory stores in Europe, a list of department stores, copies of Office decisions and a decision taken by WIPO’s arbitration and mediation Centre, all concerning the relevant period, it can be concluded that for many years ‘RALPH LAUREN’ has been one of the world’s most famous brands (see for instance the articles submitted on the history and development of the Ralph Lauren brand). It was ranked 99th in 2009 and 91st in 2012 and 2013 the 88^th amongst the world’s famous brands by Interbrand.

The advertisements in the magazines and newspapers and in public sports events, such as Wimbledon in London, are all indications that the marks have been used and promoted in at least the United Kingdom and France.

It is clear from the evidence that the earlier trade marks have been subject to long-standing and intensive use and are generally known in the relevant market of at least the United Kingdom and France, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures and marketing expenditure shown by the evidence and the various references in the press to their success all show unequivocally that the marks enjoy a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade marks have a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed, namely all the goods and services in Classes 3, 8, 9, 14, 18, 20, 21, 24, and 25 covered by the earlier marks. The evidence mainly relates to various types of articles of clothing, such as T-shirts, shirts, scarves, ties, pants, underwear, and also to footwear and headgear, different types of bags and perfumes.

There is little or no reference made to the remaining goods and services covered by the earlier marks in the evidence submitted. This is clear, for example, from the catalogues and extracts from websites showing products offered by the opponent where only the former are mentioned. Therefore no evidence of reputation for whips, harness and saddlery has been submitted.

As a result and considering what has been stated above in section c), the distinctiveness of earlier marks must be seen as low in relation to whips, harness, and saddlery, regardless that for other goods the earlier marks might enjoy a normal or high distinctiveness.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgment of 29/09/1998, C‑39/97, Canon).

The signs at issue refer to the same concept of the game of polo. The conceptual similarity lies in the inclusion in earlier marks 1), 2) and 3) of a figurative element representing a polo player and, in the case of earlier marks 2) and 4) and the contested sign, the word ‘POLO’. According to the practice of the Opposition Division, a conceptual similarity resulting from the fact that marks use images with an analogous semantic content may give rise to a likelihood of confusion only subject to the verification of other factors (particularly distinctive character, either per se or because of the reputation it enjoys with the public) (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’).

For the relevant goods covered by the application, namely whips, harness and saddlery, neither repute nor enhanced distinctiveness was proven by the opponent therefore the assessment for goods found identical must rest on the inherent distinctiveness of the sign, which is has been established as low for whips, harnesses, and saddlery in Class 18.

Even if the respective representations of the polo player are, in fact, relatively alike so that consumers, who rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, may overlook the minor differences between the respective devices, it must nevertheless be noted that given its low distinctiveness for the contested goods, these consumers will tend to pay little or no attention to the device of a polo player.

Earlier mark 1) consists of this sole figurative element and in earlier mark 2) it is a co-dominant element accompanied by the words ‘POLO’ and ‘RALPH LAUREN’. In the contested mark, the polo player device (wielding a mallet) is the centric element and it is portrayed in an independent manner between the words ‘Patrick Mc Lee’ and ‘POLO CLUB’.

Considering that the similarities lie only in the polo player representation that makes up the whole of earlier mark 1) and the co-dominant element of earlier mark 2), and its low distinctiveness for ‘whips, harness and saddlery’ the Opposition Division finds that the public concerned will not concentrate on the device of the polo player and will pay more attention to the word elements contained in the contested sign and in earlier marks 2) and 4).

The contested sign consists not only of the word ‘POLO’, but refers to a polo club - which the earlier marks do not at all - , and mention also an Irish or Scottish name: Patrick Mc Lee, which has no similarities with ‘Ralph Lauren’. Therefore earlier marks 1) and 2) will not give rise to a likelihood of confusion.

Even though earlier mark 4) is entirely included in the contested sign, visually the contested sign is much more complex than the earlier mark and the beginning of the contested sign is different from that of the earlier mark. Furthermore, aurally the earlier mark is made up of only one word. This one word is, indeed, the same as the penultimate word in the contested sign. Nevertheless, the first three words of the contested sign, to which the consumer’s attention is normally drawn, are different. Conceptually, earlier mark 4) is linked with the contested sign through the concept of polo, however, the earlier mark will be associated with a) a game of polo, b) a collar on a garment, worn rolled over to fit closely round the neck, or c) a garment, especially a sweater, with such a collar, whereas the contested sign will evoke a concept of a polo club and/or polo player called Patrick Mc Lee.

The Opposition Division finds that the overall impression given by the word mark ‘POLO’ and the contested sign is different to such an extent that there is no likelihood of confusion on the part of the public in relation to earlier mark 4) No 4 049 334

Concerning earlier right 3) invoked by the opponent that covers the same scope of relevant goods and conveys the same concept as the earlier marks that have already been compared, the Opposition Division finds that it is even less similar to the contested sign, as it contains additional figurative elements, namely two additional polo players with different postures and different positions of the players and horses. Furthermore, the evidence regarding the reputation of Community trade mark registrations No 4 049 201, No 4 049 334, and No 8 612 871 was the same as for this other earlier right invoked by the opponent. The degree of inherent distinctiveness of the other earlier right would also be found low for the goods that were found identical to the contested whips, harness and saddlery as it also conveys the concept of polo. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to this sign.

In conclusion the Opposition Division finds that with regard to the contested whips, harness and saddlery in Class 18, which are identical to the previously mentioned earlier goods for which the inherent distinctiveness of the earlier marks is low, the possible similarity between the signs at issue is furthermore reduced significantly by the fact that their common elements have low inherent distinctiveness for those goods. It follows that the mounted polo player and the word ‘POLO’ in the contested sign are not likely to be perceived as an eye-catching, independent feature for Class 18 whips, harness and saddlery. For those goods, the significance of the overlap is not such as to give rise to a likelihood of confusion. Instead, for those goods, the words ‘Patrick Mc Lee’ and the reference to a club in the contested sign will enable the relevant consumer to distinguish the signs. The goods in question are in general also more likely to be purchased by the relevant public with the help of a specialised seller to whom the purchaser may speak, with the result that the aural differences of the signs will gain in importance.

The opposition is not successful insofar as the contested goods, namely whips, harness and saddlery in Class 18 are concerned.

The same holds true for the other earlier rights invoked by the Opponent, which are even less similar to the contested sign as they contain further word elements which are not included in the EUTMA:

European trade mark registration No 5 864 781 “INTERNATIONAL 1967 CHALLENGE CUP PRL-NYC RALPH LAUREN COMPANY”;

European trade mark registration No 4 753 166 “POLO GOLF”

European trade mark registration No 4 049 367 “POLO BY RALPH LAUREN”

European trade mark registration No 8 928 772 – “POLO TENNIS”

European trade mark registration No 9 624 784 “POLO DENIM & SUPPLY”

European trade mark registration No 10 000 115 “ POLO TENNIS RALPH LAUREN”

European trade mark registration No 6 984 454 “ RLX POLO SPORT”

European trade mark registration No 8 814 451 – “POLO JEANS CO”.

Since the opposition is not successful on the basis of Article 8(1)(b) EUTMR, the Opposition Division will examine below the other grounds of the opposition, namely Article 8(5) and Article 8(4) EUTMR in relation to the contested goods.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division finds it appropriate to first examine the opposition in relation to earlier European Union trade mark registrations No 8 612 871, No 4 049 201, No 4 049 334 and No 5 824 685 for which the opponent claimed repute in the EU.

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed for certain goods and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(Judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(Judgment of 27/11/2008, C‑252/07 ‘Intel Corporation’, paragraphs 51 and 52.)

While the relevant section of the public for the goods covered by the conflicting marks can overlap to some extent, those goods are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

The opponent has proven reputation only for some of its goods, inter alia, clothing, footwear and headgear, different types of bags and perfumery products.

The producers of the remaining contested goods, namely whips, harness and saddlery are in general entirely different from the producers of the goods for which the opponent proved reputation. Goods such as harness and saddlery are highly specialised goods made by specialised producers for a very limited segment of the public, namely professional or amateur riders. They are offered in specialised stores or by special distribution channels that never collide with those offering clothes, footwear, accessories or perfumes for the general public (not for riders). These goods are neither in competition nor complementary to the opponent’s goods for which reputation was proven.

The opponent has not submitted any evidence that could support its claim that the consumers would link the abovementioned equestrian products with the opponent’s goods for which it proved reputation.

Taking into account all the above, it is unlikely that the contested sign would remind the relevant consumer of the earlier marks, since it is virtually impossible to imagine a transfer of image from clothing, footwear and headgear, different types of bags and perfumery products to goods such as harnesses and saddlery.

Therefore, taking into account and weighing up all the relevant factors of the present case, in particular also the low inherent distinctiveness of the earlier marks for the contested goods, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

The same outcome holds true concerning the other earlier marks of the opponent in relation to which Article 8(5) EUTMR was invoked.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

In the present case the opponent expressly limited its observations (see page 2 of its brief of 25 February 2014) on the grounds under Articles 8(1)(b) and 8(5) EUTMR and therefore did not file any observations concerning Article 8(4) EUTMR, in consequence the opposition based on this ground must be rejected.

Given that none of the necessary requirements of Article 8(4) EUTMR is met – the opponent did not submit any observations regarding Article 8(4) EUTMR, the opposition must be rejected as unfounded.

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

Plamen IVANOV

Karin KLÜPFEL

Ana MUÑIZ RODRÍGUEZ

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.