OPPOSITION Nо B 3 071 538

McGregor IP B.V., Schipholboulevard 373, 1118 BJ Schiphol, Netherlands (opponent), represented by Leeway B.V., Barbara Strozzilaan 101, 1083HN Amsterdam, Netherlands (professional representative)

a g a i n s t

McGregor Sports and Entertainment Limited, Charter House, 5 Pembroke Row, Dublin 2, Ireland (applicant), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 23/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 538 is partially upheld, namely for the following contested goods:

	Class 9: Apparatus for recording, transmission or reproduction of sound and images; recording discs; computer and video games; DVD’s; videos; protective clothing; compact discs; teaching apparatus and instruments. Class 25: Clothing; footwear; headgear.
2.	European Union trade mark application No 17 937 623 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 937 623 ‘McGREGOR PRODUCTIONS’ (word mark), namely against all the goods in Classes 3, 9 and 25. The opposition is based on European Union trade mark registrations No 2 927 549 and No 2 888 261, both for the word mark ‘McGREGOR’. 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:

After the Board of Appeal’s final decision (10/06/2020, R 2191/2019‑4 and R 2224/2019‑4, McGregor), EUTM No 2 927 549 continues to be registered for:

Class 25: Clothing, footwear with the exception of golf shoes, headgear.

EUTM No 2 888 261:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; spectacles, spectacle frames, spectacle lenses; apparatus and instruments for the conduction, distribution, conversion, storage, regulation and management of electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data-carriers, recording discs; automatic vending machines for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

The contested goods are the following:

Class 3: Aftershave; toiletries; shaving oils; shaving gels; shaving foam; perfume; cosmetics.

Class 9: Apparatus for recording, transmission or reproduction of sound and images; recording discs; computer and video games; DVD’s; videos; protective clothing; compact discs; teaching apparatus and instruments.

Class 25: Clothing; footwear; headgear.

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 3

The contested aftershave; toiletries; shaving oils; shaving gels; shaving foam; perfume; cosmetics differ in nature and purpose from all the opponent’s goods. They are neither complementary nor in competition with each other. They are distributed through different channels and do not coincide in their points of sale. Moreover, they are manufactured by different companies and have a different method of use. Therefore, they are dissimilar.

Contested goods in Class 9

The contested apparatus for recording, transmission or reproduction of sound and images; recording discs; teaching apparatus and instruments are equally listed in the wording of earlier EUTM No 2 888 261. Therefore, they are identical.

The contested DVD’s; compact discs overlap with the opponent’s broader category recording discs and thus they are identical.

The contested videos are included in the opponent’s broader category apparatus for recording, transmission or reproduction of sound or images, and therefore, they are identical.

The opponent’s data processing equipment and computers include, as a broader category, personal computers which can also be used to play games. Computers can even be equipped with specific components (e.g. high performance video cards) which make them particularly suitable for gaming. Therefore the contested computer and video games and the opponent’s data processing equipment and computers can be complementary and target the same public. Furthermore, they can coincide in producers and distribution channels. Therefore, they are similar.

The contested protective clothing is similar to a low degree to the opponent’s clothing in Class 25, as they have the same nature. Moreover, they usually coincide in the relevant public and method of use.

Contested goods in Class 25

Clothing and headgear are identically contained in the lists of the contested mark and the earlier EUTM No 2 927 549. The contested footwear includes, as a broader category the opponent’s footwear with the exception of golf shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 and similar to various degrees are directed at the public at large. Further, part of the relevant goods in Class 9 such as apparatus for recording, transmission or reproduction of sound and images may be also directed at the professional public. The level of attention varies from average to high depending on the degree of specialisation of the goods and their price.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

McGREGOR	McGREGOR PRODUCTIONS
Earlier trade marks	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 marks include the verbal element ‘McGREGOR’, which will be perceived as a surname by the relevant public. Part of the public, in particular the English-speaking public, will recognise the prefix ‘Mc’ of this element, signifying ‘son of’, as a prefix to many Scottish or Irish family names. (18/05/2011, T‑502/07, EU:T:2011:223). This word has a normal degree of distinctiveness, since it has no relation with the relevant goods.

The additional verbal element of the contested sign, ‘PRODUCTIONS’, will be perceived by the relevant public as referring to the manufacture of goods for sale and consumption. This term will be understood by the majority of the relevant public since it exists in the relevant languages (i.e. in English and French) or there are similar equivalents (i.e. ‘producciones’ in Spanish, ‘producţie‘ in Romanian, ‘produkcje’ in Polish, ‘Producktionen’ in German, ‘produzioni’ in Italian). This term strongly alludes, if not directly describes, to the company’s type of activities and therefore, it has, at most, a low degree of distinctiveness.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar to a high degree to the extent that they share the same surname.

Visually and aurally, the signs coincide in the element ‘McGREGOR’, and therefore the earlier marks are fully included at the beginning of the contested mark, where consumers generally tend to focus on 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. The signs differ in the additional element of the contested sign ‘PRODUCTIONS’, which is at most weak. Therefore, the degree of visual and aural similarity of the signs is high.

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 marks

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 claimed that the earlier trade marks enjoy enhanced distinctiveness since the marks are not descriptive for the relevant goods and have been registered and used for many years.

It is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Beverley Hills Polo Club, EU:T:2015:192, §49). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71).

The opponent did not file enough evidence in order to prove an enhanced degree of distinctiveness of the earlier marks. The only evidence submitted (as Annex 1) was two printouts from the website www.mcgregornewyork.com. These were filed to show that the opponent’s goods can be found in retail stores and online. Therefore, the evidence does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness. 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods in Classes 9 and 25 are identical and similar to various degrees to the opponent’s goods, whereas the contested goods in Class 3 are dissimilar. They are directed at the public at large, and also, part of them, at the professional public. As mentioned above, the examination is based on the public at large, since it is more prone to confusion.

The earlier marks are of a normal distinctiveness for the relevant public.

As explained above, the signs are similar to a high degree on account of the fact that the earlier marks are fully included at the beginning of the contested sign and the only different element in the contested sign is, at most, weak.

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 ‘McGREGOR PRODUCTIONS’ as a sub-brand, a variation of the earlier marks, 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).

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public. Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations.

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).

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to the opponent’s goods, including those goods similar to a low degree given the degree of similarity existing between the signs.

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.

For the sake of completeness, as regards the dissimilar goods, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for the remaining part of the public (i.e. professionals), as the outcome of the present decision would still be the same.

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

Oana-Alina STURZA

Ana MUÑIZ RODRIGUEZ

Frédérique SULPICE

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.