OPPOSITION No B 3 051 470

CD Company of Scandinavia A/S, Klamsagervej 19 B, 8230 Åbyhøj, Denmark (opponent), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative)

a g a i n s t

Engelssons Postorder AB, Kanslistvägen 6, SE-311 39 Falkenberg, Sweden (applicant), represented by Lennart Nilsson, Ljungsjövägen 31, SE-311 95 Falkenberg, Sweden (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 470 is partially upheld, namely for the following contested goods:

Class 18: Casual bags.

Class 25: Clothing, shoes.

2. European Union trade mark application No 17 613 407 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 613 407 for the word mark ‘NORTH HUNT’, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 13 397 534 . 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 and services on which the opposition is based are the following:

Class 25: Clothing, footwear, headgear.

Class 35: The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), namely clothing and shoes, via retail shops, wholesale outlets or electronic media, enabling customers to conveniently view and purchase those goods.

The contested goods are the following:

Class 18: Leather, casual bags and bridles.

Class 25: Clothing, shoes.

Contested goods in Class 18

The contested casual bags are similar to the opponent’s clothing since these goods are common fashion accessories that consumers tend to combine to achieve a particular look and/or fashion style. These goods will target the same relevant public and, furthermore, they will coincide in their distribution channels such as outlets and fashion stores, as well as in their producers.

The remaining contested goods in this class are dissimilar to all the opponent’s goods and services since they have nothing in common. While the opponent’s goods and services are fashion articles, such as clothing, footwear and headgear, as well as the services of trade thereof, the contested leather is a raw material used for making, inter alia, end products in the fashion industry. The mere fact that one product is used for the manufacture of another will not be sufficient in itself to demonstrate that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials subjected to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T‑270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T‑288/12, Zytel, EU:T:2014:196, § 39-43).

Finally, the contested bridles are pieces of equipment used on a horse’s head to control the direction in which it moves. It is apparent that these goods have nothing in common with any of the opponent’s goods or services. They are dissimilar, since they target completely different consumers and have different distribution channels and manufacturers.

Contested goods in Class 25

Clothing is identically contained in both lists of goods (including synonyms). The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is average.

3. The signs

	NORTH HUNT
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements composing both signs will be understood by English speakers who will be more prone to confusion than others due to the conceptual link between the signs. Consequently, it is appropriate to focus the comparison of the signs on the English-speaking part of the public.

The words ‘HUNT’ and ‘HUNTING’ will be both associated with the act of chasing and killing of game and wild animals or in the more general sense, the activity of searching for a particular thing. The words ‘NORTH’ and ‘NORTHERN’, on the other hand, will be essentially perceived in relation to one of the four cardinal points of the compass or the place, position and movements corresponding to that direction.

The applicant contests the distinctiveness of the earlier mark referring to previous examinations on absolute grounds carried out by the Office and a case on relative grounds (06/10/2008, R 1788/2007‑4, EUROPEAN FOOD (FIG. MARK) / EURO FOOD) dealt with by the Boards of Appeal. None of those cases is comparable or applicable to the present case. Even though the words ‘hunt’/‘hunting’ may serve to indicate that the goods in question would be broadly used for hunting purposes, the expressions ‘northern hunting’ and ‘north hunt’ as a whole remain at most allusive, but generally vague and sufficiently unclear with regard to the exact nature or characteristics of the goods in question. Therefore, they are distinctive. Moreover, bearing in mind that the elements of the contested sign are almost identically contained in both marks (from a conceptual point of view, at least), the distinctiveness of the marks would be the same in relation to the distinctiveness of those elements. Consequently, the applicant’s allegations in that respect have to be dismissed.

As the opponent correctly notes, the black shield used in the earlier mark will be seen as a mere decorative component with less impact on the overall impression conveyed by its sign. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). The slight stylisation of the letters of the earlier mark will also be seen as a secondary component, with less importance within the sign.

Visually and aurally, the signs coincide in the string of letters/sounds ‘NORTH***’ and ‘HUNT***’. However, they differ in the endings ‘ERN’ and ‘ING’, present in the earlier mark, as well as in the stylisation of its letters and black shield. For the reasons explained above, these figurative elements will be of secondary importance visually and even none aurally. As regards the differing endings, account is taken of the fact that consumers usually focus on the initial parts of the signs as these are the ones that are primarily perceived (due to the fact that consumers read from left to right); consequently, the different endings occupy less prominent positions in the verbal elements.

Therefore, given the above considerations, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived with the meanings outlined above, the signs are conceptually nearly identical. For the sake of completeness, the applicant’s argument that its sign will be perceived as a family name by English speakers must be disregarded since this allegation lacks any reasoning, and dissimilarity between the signs on that basis cannot be established.

As the signs have been found (at least) similar in all aspects 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 goods are partly identical, partly similar, and partly dissimilar. The degree of attention of the relevant public will be average and the earlier mark enjoys a normal degree of distinctiveness as a whole.

Furthermore, the signs are visually and aurally highly similar and conceptually nearly identical. The differing elements of the signs, in particular the different endings of the earlier mark’s elements and its additional figurative elements, will have less weight when assessing the overall similarity of the signs, as these are only secondary differences that will not on their own prevent consumers confusing the 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). This finding is reinforced by the fact that consumers will recall the same concept when encountering either of the signs on the market.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sofía SACRISTÁN MARTÍNEZ

Manuela RUSEVA

Tzvetelina IANTCHEVA

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.