OPPOSITION No B 2 960 048

The Polo/Lauren Company L.P., 650 Madison Avenue, 10022, New York, United States (opponent), represented by Mishcon de Reya LLP, Africa House, 70 Kingsway, London, WC2B 6AH, United Kingdom (professional representative)

a g a i n s t

Jishuang Yu, No.7, Xishan Village, Tongfan Town, Guangfeng County, 334000 Shangrao, People’s Republic of China (applicant), represented by Bellavista Legal S.L., Av. Diagonal 463 bis 3r 4a, 08036 Barcelona, Spain (professional representative).

On 26/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 960 048 is upheld for all the contested goods.

2. European Union trade mark application No 16 860 215 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 860 215 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 4 049 334 for the word mark ‘POLO’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR, and, in relation to other earlier rights, also 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 Union trade mark registration No 4 049 334 for the word mark ‘POLO’.

1. The goods

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

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.

The contested goods are the following:

Class 18: School bags; back packs; purses; briefcases; tote bags; travelling bags; briefcases for documents; travelling cases; make-up bags; rucksacks; key bags; bags; credit card cases; business card cases; sports bags.

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 school bags; purses; briefcases; tote bags; travelling bags; back packs; briefcases for documents; travelling cases; make-up bags; rucksacks; key bags are identically contained in both lists of goods (including synonyms).

The contested bags include, as a broader category, the opponent’s handbags. 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 credit card cases; business card cases are included in the broad category of the opponent’s card cases. Therefore, they are identical.

The contested sports bags are similar to a high degree to the opponent’s rucksacks, as they have the same purpose and nature. They usually have the same producers, relevant public and distribution channels.

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 a high degree are directed at the public at large.

The degree of attention is average.

3. The signs

POLO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The word ‘POLO’, present in both marks, will be perceived by the majority of the public in the relevant territory as referring to the game of polo, which is played between two teams of players riding horses.

This word has a normal degree of distinctiveness in relation to the relevant goods in Class 18, given that they have no connection with the playing of polo (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49).

The word ‘FANKE’ in the contested sign will be perceived as meaningless and has a normal degree of distinctiveness.

The marks have no elements that are more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘POLO’, which constitutes the entire earlier mark and the second word in the contested sign. However, they differ in the additional word, ‘FANKE’, and in the slight stylisation of the contested sign, which is rather standard.

Therefore, the signs are visually similar to an average 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 word ‘POLO’, present identically in both signs. The pronunciation differs in the sound of the word ‘FANKE’ in the contested sign, which has no counterpart 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 will be associated with the same meaning on account of the word ‘POLO’, while the additional word ‘FANKE’ in the contested sign is meaningless, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The earlier mark has a normal degree of inherent distinctiveness. The relevant public is the public at large and the degree of attention is average.

The conflicting goods are partly identical and partly similar to a high degree.

The signs are visually and aurally similar to an average degree. Conceptually, they are similar to a high degree

Taking into account the identity and high degree of similarity between the goods, as well as the similarities between the signs resulting from the fact that the earlier mark is fully included in the contested sign, a likelihood of confusion exists.

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 mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 European Union trade mark registration No 4 049 334 for the word mark ‘POLO’. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 4 049 334 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) and Article 8(4) EUTMR.

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

Chantal VAN RIEL

Saida CRABBE

Vita VORONECKAITE

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.