OPPOSITION No B 2 928 094

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

a g a i n s t

Shenzhen Commas Co., Limited, 704 Unit A, Bldg 6, Ronghengxinyuan, Xixiang Baotian 1st Rd, Bao’an Dist, Shenzhen, China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand 6 — 5ª planta, 28050 Madrid, Spain (professional representative).

On 30/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 928 094 is upheld for all the contested goods, namely:

Class 18: Travelling trunks; rucksacks; handbags; attaché cases; travelling sets [leatherware]; trunks [luggage]; key cases; valises; bags for sports.

2. European Union trade mark application No 16 550 022 is rejected for all the contested goods. It may proceed for the remaining uncontested goods.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 550 022 , namely against some of the goods in Class 18. The opposition is based on Portuguese trade mark registration No 379 879 for goods in Classes 18 and 25. 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

The goods on which the opposition is based are, inter alia, the following:

Class 18: Hand bags, travelling bags, umbrellas, sunshades.

The contested goods are the following:

Class 18: Travelling trunks; rucksacks; handbags; attaché cases; travelling sets [leatherware]; trunks [luggage]; key cases; valises; bags for sports.

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.

Handbags are identically contained in both lists of goods.

The contested travelling sets [leatherware] include, as a broader category, or overlap with, the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested rucksacks are similar to a high degree to the opponent’s travelling bags; both are types of bags. They have the same nature and purpose, since both are used for carrying belongings and rucksacks are also commonly used for travelling. Therefore, they may also be in competition. They can have the same producers, relevant public and distribution channels.

The contested attaché cases; key cases; valises; bags for sports are similar to the opponent’s travelling bags, as they have the same general purpose, namely to contain and carry objects of various natures. Moreover, these goods can have the same end users, distribution channels and producers.

The contested travelling trunks and trunks [luggage] are similar to the opponent’s travelling bags because they have the same purpose. Moreover, they have the same distribution channels and end users.

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 or similar to various degrees are directed at the public at large.

The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Both trade marks are figurative marks.

The earlier mark contains the word ‘HORSE’. This word is depicted in bold, rather standard upper case letters. Above the word element, there is a typical figurative depiction of a horse in motion.

The contested trade mark includes the word combination ‘FERALHORSE’. This word element is depicted in bold, rather standard upper case letters. Above the word element, there is a highly stylised graphical depiction of a horse’s head facing left. As regards the verbal element of the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the verbal element of the contested trade mark will be perceived as being composed of the words ‘FERAL’ and ‘HORSE’.

A part of the public in the relevant territory will perceive the coinciding verbal element, ‘HORSE’, of the trade marks as the English word for the domesticated animal, since it is a basic English word. Furthermore, the presence of the verbal element ‘HORSE’ and the figurative elements in both signs, depicting a horse and a horse’s head in the earlier and contested signs, respectively, reinforce each other, with the result that part of the public will more easily understand one because of the other. As the coinciding verbal element ‘HORSE’ and the figurative elements of the trade marks described above are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive to an average degree.

The verbal element ‘FERAL’ of the contested trade mark will be perceived as ‘funeral’ (information extracted from Infopedia Dicionarios Porto Editora on 30/08/2018 at https://www.infopedia.pt/dicionarios/lingua-portuguesa/feral). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive to an average degree.

Neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘HORSE’. However, they differ in the additional word, ‘FERAL’, of the contested trade mark and the different depictions of the horse in the trade marks, namely a horse in motion in the earlier mark and a horse’s head in the contested trade mark.

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

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‛HORSE’, present identically in both signs. The pronunciation differs in the sounds of the letters ‛FERAL’ of the contested sign, which have no counterparts in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs coincide in the verbal element ‘HORSE’ and the figurative elements of both signs evoke the same concept of a horse, the signs are conceptually highly similar for the Portuguese consumer/part of the relevant public with a basic knowledge of English.

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.

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

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

5. Global assessment, other arguments and conclusion

The contested goods are identical or similar to various degrees to the opponent’s goods and target the public at large with an average degree of attention.

The signs are visually and aurally similar to an average degree on account of the coinciding verbal element ‘HORSE’, which forms the entire verbal element of the earlier mark and is included in the contested sign. The figurative elements of the trade marks, although depicted differently, evoke the same concept of a horse and make the signs conceptually highly similar.

The differences are confined to the first verbal element of the contested trade mark, ‘FERAL’, and to the different depictions of the horse in the trade marks.

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).

The fact that the single verbal element of the earlier mark is entirely included in the contested sign may lead the public to believe that the goods at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 31 and 32). Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested trade mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In the present case, the fact that the coinciding element is neither dominant nor in the first or top position in the contested sign does not play a decisive role. Although it is true that more attention is usually paid to the beginning of a trade mark, in cases in which the contested trade mark incorporates the earlier mark, it is not very important whether the contested trade mark incorporates the earlier mark as its first or second element. The protection against likelihood of confusion applies in both directions: the owner of the earlier mark is protected not only against the contested trade mark being understood as referring to its goods but also against its mark being understood as referring to the applicant’s goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 379 879. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Birgit FILTENBORG

Francesca DRAGOSTIN

Rasa BARAKAUSKIENE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.