OPPOSITION No B 2 424 896

Manuel Jacinto, LDA, Rua da Igreja, n° 352, 4535-446 S. Paio de Oleiros, Portugal (opponent), represented by Álvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisboa, Portugal (professional representative)

a g a i n s t

John Hogg & Co, Limited, 1-6 St Helens Business Park, 130-134 High Street, Holywood, Co Down BT18 9HQ, United Kingdom (applicant), represented by Mathys & Squire LLP, Abbey House 32 Booth Street, Manchester Lancashire M2 4AB, United Kingdom (professional representative).

On 06/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 424 896 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 944 211, namely against all the goods in Classes 18 and 25 and some of the services in Class 35. The opposition is based on Portuguese trade mark registration No 379 879, United Kingdom trade mark registration No 2 438 534 and European Union trade mark registration No 4 872 107. 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.

1. The goods and services

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

Portuguese trade mark registration No 379 879

Class 18: Hand bags, travelling bags, umbrellas, sunshades, whips, horse‑trappings and saddlery.

Class 25: Belts.

United Kingdom trade mark registration No 2 438 534

Class 18: Goods made from leather, none being for equine use; luggage, bags and handbags; wallets and purses.

European Union trade mark registration No 4 872 107

Class 35: Advertising, including television and radio advertising; dissemination of advertising material such as pamphlets, prospectuses, printed matter and samples; rental of advertising space; business management; business administration.

The contested goods and services are the following:

Class 18: Bags; holdalls; rucksacks; umbrellas; handbags; purses, wallets; luggage; travelling trunks, bags and travelling sets, vanity cases, trunks (luggage), suitcases, school satchels, school bags and briefcases, valises, card cases.

Class 25: Clothing; raincoats; hats and scarves; belts (for wear).

Class 35: Wholesale, retail and mail order sale of bags, holdalls, rucksacks, umbrellas, handbags, purses, wallets, luggage; travelling trunks, bags and travelling sets, vanity cases, trunks (luggage), suitcases, school satchels, school bags and briefcases, valises, card cases, clothing, raincoats, hats and scarves, belts (for wear); information, advisory and consultancy services relating to the aforesaid services.

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.

Contested goods in Class 18

The contested bags; umbrellas; handbags; purses, wallets; luggage; travelling bags are identically contained either in earlier Portuguese trade mark registration No 379 879 or in earlier United Kingdom trade mark registration No 2 438 534, or in both.

The contested holdalls; rucksacks; travelling trunks and travelling sets, vanity cases, trunks (luggage), suitcases, school satchels, school bags and briefcases, valises; card cases are included in the broad category of the opponent’s goods made from leather, none being for equine use of earlier United Kingdom trade mark registration No 2 438 534. Therefore, they are identical.

Contested goods in Class 25

The contested belts (for wear) are identically contained in earlier Portuguese trade mark registration No 379 879 (albeit using slightly different wordings).

Belts are narrow pieces of leather, cloth, etc. that one wears around the waist, for example to keep clothes in place or for decoration. The contested clothing includes, as a broader category, the opponent’s belts contained in earlier Portuguese trade mark registration No 379 879. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Raincoats are long coats, often having a belt, made from waterproofed or water‑resistant fabric. A hat is a shaped covering for the head worn for warmth, as a fashion item, or as part of a uniform. Scarves are pieces of cloth worn around the neck, head or shoulders to keep warm or worn for personal adornment. All these articles, as well as the opponent’s belts, are intended for wear by humans, either as protection from the elements or as articles of fashion, and as such they are often found in the same departments of large department stores and in the same retail outlets. Consumers, when seeking to purchase these different items will expect to find also belts in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all these products. Therefore, the contested raincoats; hats and scarves are similar to the opponent’s belts contained in earlier Portuguese trade mark registration No 379 879.

Contested goods in Class 35

Advisory services refer to providing advice that is tailored to the circumstances or needs of a particular user and that recommends specific courses of action for the user. Provision of information, on the other hand, refers to providing a user with material (general or specific) about a matter or service but not advising the user on specific courses of action.

The opponent’s business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand market share. Examples of business management are business research and appraisals, cost price analysis and organisation consultancy, since they are all intended to help in the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources; improve productivity; increase market share; deal with competitors; reduce tax bills; develop new products; communicate with the public; do marketing; research consumer trends; launch new products and how to create a corporate identity; etc.

Therefore, the contested information, advisory and consultancy services relating to the aforesaid services (wholesale, retail and mail order sale of bags, holdalls, rucksacks, umbrellas, handbags, purses, wallets, luggage; travelling trunks, bags and travelling sets, vanity cases, trunks (luggage), suitcases, school satchels, school bags and briefcases, valises, card cases, clothing, raincoats, hats and scarves, belts (for wear)) are included in the broad category of the opponent’s business management in Class 35 of earlier European Union trade mark registration No 4 872 107. Therefore, they are identical.

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that 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.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc. (to the extent that these fall into Class 35).

Therefore, the contested wholesale, retail and mail order sale of of bags, holdalls, rucksacks, umbrellas, handbags, purses, wallets, luggage; travelling trunks, bags and travelling sets, vanity cases, trunks (luggage), suitcases, school satchels, school bags and briefcases, valises, card cases, clothing, belts (for wear) are similar to a low degree to the opponent’s hand bags, travelling bags and umbrellas in Class 18 and belts in Class 25 of earlier Portuguese trade mark registration No 379 879 and to the opponent’s goods made from leather, none being for equine use; luggage, bags and handbags; wallets and purses in Class 18 of earlier United Kingdom trade mark registration No 2 438 534.

However, the contested wholesale, retail and mail order sale of raincoats, hats and scarves are dissimilar to the opponent’s goods in Classes 18 and 25 of earlier Portuguese trade mark registration No 379 879 and to the goods in Class 18 of earlier United Kingdom trade mark registration No 2 438 534. Retail services relating to the sale of particular goods and other goods are not similar. It should also be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity is found where the goods sold at retail are only highly similar or similar to the goods covered by the other mark.

Furthermore, these contested services are also dissimilar to the opponent’s advertising, including television and radio advertising; dissemination of advertising material such as pamphlets, prospectuses, printed matter and samples; rental of advertising space; business management; business administration in Class 35 of earlier European Union trade mark registration No 4 872 107. On one hand, the contested wholesale, retail and mail order sale of raincoats, hats and scarves refer to the action or business of selling these goods in small (retail) or big (wholesale) quantities for use (retail) or resale (wholesale). On the other hand, advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. Therefore, advertising is generally dissimilar to the goods or services being advertised. The opponent’s business management services, as stated above, are intended to help companies manage their business. Finally, the opponent’s business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation's board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies. Therefore, the abovementioned contested services and the opponent’s services have different origins and purposes, and they target a different public.

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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

Earlier trade marks	Contested sign

The relevant territories are Portugal, the United Kingdom and the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier marks are figurative marks composed of the verbal element ‘HORSE’, in uppercase black letters and in a standard typeface and, above that, a black figurative element depicting a galloping horse, facing right.

The contested sign is a figurative mark composed of the verbal elements ‘STORY HORSE’, in stylised uppercase letters and, above them, a figurative element consisting of a horseshoe with a big star depicted in the central part, in which the elements are depicted in shades of grey.

A part of the public in the relevant territories, namely consumers with at least some knowledge of English, will perceive the verbal element ‘HORSE’, present in both signs, as the English word for the domesticated animal. In the earlier marks, this concept is reinforced by the figurative element depicting a galloping horse, which will be perceived as such by the entire relevant public.

The verbal element ‘STORY’ in the contested sign is likely to be understood by the part of the public in the relevant territories with at least some knowledge of English as ‘an account of imaginary or real people and events told for entertainment’ (information extracted from Oxford Dictionaries on 24/11/2016 at www.oxforddictionaries.com).

The figurative elements of the contested sign, consisting of a horseshoe and a star, will be perceived as such by the relevant public.

Neither of the signs have any elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘HORSE’. However, they differ in the first verbal element in the contested sign, ‘STORY’, and their figurative elements, namely the black galloping horse of the earlier mark versus the decorated horseshoe in the contested sign. The signs further differ in the stylisation of the letters in the contested sign, which appear thin and elongated, in contrast to the black standard letters of the earlier mark.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /HORSE/, present identically in all signs. The pronunciation differs in the sound of the letters /STORY/ of the contested sign, which have no counterparts in the earlier marks, and which are placed at the beginning of the contested sign. The signs have a different structure (one verbal element versus two) and different lengths (five letters versus ten), and are pronounced, most likely, in one or two syllables (the earlier marks) versus three or four (the contested sign).

Therefore, the signs are aurally similar at most to an average degree.

Conceptually, for the part of the public that will not understand the element ‘HORSE’, present in all signs, since the signs will be associated with different concepts, namely a horse on the one hand and a horseshoe and a star and, where understood, a story on the other, the signs are not conceptually similar.

For the part of the public that understands the verbal element ‘HORSE’, present in all signs, the signs are conceptually similar at most to an average degree. This similarity is further diminished for the part of the relevant public that also understands the verbal element ‘STORY’ of the contested sign, which adds a semantic content not included in the earlier marks.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant 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 two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and business customers with an average degree of attention.

The signs are visually similar to a low degree since they only coincide in the verbal element ‘HORSE’, which is the second verbal element of the contested sign, whereas the signs differ in their figurative elements and in the first verbal element of the contested sign, as described above.

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). In this respect, bearing in mind that the contested goods found to be identical and similar to varying degrees are, in general, goods made from leather, clothing and headgear, the considerable visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them.

From an aural perspective, the pronunciation differs in the first verbal element of the contested sign, ‘STORY’, resulting in the signs having different structures and lengths, as explained above.

The signs are conceptually similar at most to an average degree since, apart from the coinciding verbal element ‘HORSE’, they contain additional elements, which will be associated with different meanings, namely the verbal element ‘STORY’ of the contested sign (where understood), and in any case their differing figurative elements.

Considering all the above, notwithstanding the identity and similarity (to varying degrees) found in respect of some of the contested goods and services, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that the consumers believe that the respective goods and services come from the same or from economically-linked undertakings. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Marta GARCÍA COLLADO

Natascha GALPERIN

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.