OPPOSITION No B 3 056 433

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

Desori di Nicolò Smania, via G.Cantore n°12, 35123 Padova, Italy (applicant).

On 30/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 433 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 869 105 , namely against some of the goods in Class 18. The opposition is based on Portuguese trade mark registration No 379 879 . 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.

a) The goods

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

Class 18: Hand bags, travelling bags.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; card holders made of leather; card holders made of imitation leather; document cases of leather.

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 luggage, bags and other carriers are identical to the opponent’s travelling bags, because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested wallets; card holders made of leather; card holders made of imitation leather; document cases of leather and the opponent’s travelling bags target the same relevant public, they can be manufactured by the same companies and are distributed through the same channels. Therefore, they are similar.

b) 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 considered average.

c) 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).

The earlier mark is a figurative mark that is composed of the verbal element ‘HORSE’ in bold standard upper-case letters and, above it, there is a black figurative element depicting a galloping horse, facing right.

The contested sign is a figurative mark composed of the verbal elements ‘DES-ORI’ and ‘HORSE’ arranged on two lines; both are in standard upper-case letters, but of different sizes. Above them, there is a figurative element that resembles the head and neck of a horse facing left.

Part of the relevant public will perceive the verbal element ‘HORSE’, present in both signs, as the English word for a domesticated animal and another part of the relevant public will perceive this word as meaningless. For the part of the relevant public that will perceive the meaning of the word ‘HORSE’ in the signs, this concept is reinforced by the figurative element depicting a galloping horse in the earlier mark and in the contested sign by the head and neck of an animal that resembles a horse. The concept of a horse conveyed by the figurative elements will also be perceived by the part of the relevant public for which the word ‘horse’ is meaningless.

The verbal element ‘HORSE’ present in both signs and the figurative elements have no connection to the relevant goods and they have a normal degree of distinctiveness irrespective of whether the relevant public perceives the meaning of the word ‘horse’ or not.

The verbal element ‘DES-ORI’ in the contested sign has no meaning for the relevant public and is therefore distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

In the contested sign, both the verbal element ‘DES-ORI’ and the figurative element are co-dominant elements, due to their size and position, whilst the verbal element ‘HORSE’ is in a secondary position as it is the smallest element and is at the bottom of the sign.

Visually, the signs coincide in the verbal element ‘HORSE’, which is distinctive in relation to the relevant goods; however, it is in a secondary position within the contested sign. The signs differ in the distinctive verbal element ‘DES-ORI’, present only in the contested sign, which is a co-dominant element. Furthermore, although both signs contain images resembling a horse, they are depicted in a very different manner. In the earlier mark the figurative element is a standard galloping horse, all in black, whilst in the contested sign the figurative element is not a standard depiction of a horse but it rather resembles one and has stripes. Moreover, in the earlier mark the full body of the horse is depicted, whilst in the contested sign there is only its head and a neck. Furthermore, the horses face opposite directions in the signs.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumers 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). Therefore, in the present case, the verbal elements will have a stronger impact on the consumers than the figurative elements. However, out of the verbal elements in the contested sign, the verbal element ‘DES-ORI’, which has no counterpart in the earlier mark, is depicted in larger letters and is in central position within the contested sign. Thus it has more impact than the verbal element ‘HORSE’ below it, which, as explained above, plays a secondary role within the contested sign.

Taking into account the different graphic depictions of the figurative elements and their limited impact on the consumers when perceiving the signs, the secondary position of the only verbal element in the earlier mark that appears within the contested sign, and the central position of the differing verbal element in the contested sign (which will first catch consumers’ attention), the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛HORSE’, present identically in both signs. The pronunciation differs in the sound of the verbal elements ‛DES‑ORI’ of the contested sign, which have no counterparts in the earlier mark. Furthermore, the signs differ in their length, rhythm and intonation.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, when encountering the contested sign consumers will refer to it verbally by ‘DES-ORI-HORSE’ or even only as ‘DES-ORI’ whilst they will refer to the earlier mark as ‘HORSE’.

Taking into account that the signs have different length, structure and rhythm due to the presence of the differing verbal element ‘DES-ORI’, which, moreover, will be pronounced first when referring verbally to the contested sign, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept of a horse regardless of whether the relevant public perceives the meaning of the verbal element ‘HORSE’ or not, and to that extent the signs are conceptually similar to a high degree.

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

d) 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.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical or similar. They target the public at large that displays an average degree of attentiveness. The signs are visually and aurally similar to a low degree and conceptually highly similar.

The similarity between the signs resides mainly in that they both contain the verbal element ‘HORSE’ and figurative elements depicting a horse. However, the verbal element ‘HORSE’ plays a secondary role within the contested sign and the depictions of the horses, as explained above in section c), are quite different. Moreover, the verbal element ‘DES-ORI’ is in a central position within the contested sign and, together with the figurative element, it is a co-dominant element. These two elements play an important role in the overall impression created by the contested sign, whereas the word ‘HORSE’ plays only a secondary role.

According to settled case-law 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). The same provisions are also applicable to the relevant goods in Class 18. The relevant goods in this class are also primarily chosen visually and consequently the visual perception of the signs plays a greater role in the global assessment of the likelihood of confusion.

Therefore, the considerable visual differences between the signs caused by the differing verbal element ‘DES-ORI’ and by different graphic depictions of the figurative elements are particularly relevant when assessing the likelihood of confusion between them. Moreover, the visual differences between the signs in the present case are clearly noticeable for the relevant public and, taking into account the importance of the visual aspect of purchasing the relevant goods, these differences are not outweighed by the high degree of conceptual similarity of the signs.

Taking into account the size, position and role within the contested sign of the differing verbal element ‘DES-ORI’ and the differences between the figurative elements, the differences between the signs are sufficient to safely exclude likelihood of confusion, including likelihood of association.

Considering all the above, there is no likelihood of confusion even for identical or similar goods. Therefore, the opposition must be rejected.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Irina SOTIROVA

Birute SATAITE-GONZALEZ

Rosario GURRIERI

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.