OPPOSITION No B 3 073 758

Louis Vuitton Malletier, 2 rue du Pont-Neuf, 75001 Paris, France (opponent), represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany (professional representative)

a g a i n s t

Human Horizons Holdings Co., Ltd., Room 8438, Building 3, 1700 Gangyan Road, Gangyan Town, Chongming District, Shanghai, People’s Republic of China (applicant), represented by Hannke Bittner & Partner Patent- und Rechtsanwälte mbB, Prüfeninger Straße 1, 93049 Regensburg, Germany (professional representative).

On 18/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 758 is partially upheld, namely for the following contested goods:

Class 18: Leather laces; walking sticks; backpacks; travelling trunks; key cases; passport holders; baggage tags; tool bags, empty.

Class 25: All the goods in this class.

2. European Union trade mark application No 17 962 106 is rejected for all the above goods. It may proceed for the remaining contested goods, namely umbrellas; leather, unworked or semi-worked in Class 18.

3. Each party bears its own costs.

REASONS

Initially, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 962 106 for the figurative mark , namely against all the goods in Classes 18 and 25. However, following the applicant’s division of the remaining goods and services into a new application, the opposition remains directed against all the goods of the contested application. The opposition is based on United Kingdom trade mark registration No 3 190 220 for the word mark ‘HORIZON’, in relation to which 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.

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 United Kingdom trade mark registration No 3 190 220.

1. The goods

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

Class 18: Luggage; straps for luggage; straps for handbags; vanity cases, not fitted; leather cases; key cases of leather and skins; trunks and suitcases; small clutches [handbags]; pouches of leather; credit card holders [wallets]; business card holders; wallets; saddlebags; bags; rucksacks; handbags; wheeled bags; travelling bags; bags for sport; garment bags for travel; briefcases; travelling sets [leatherware].

The contested goods are the following:

Class 18: Leather laces; walking sticks; backpacks; travelling trunks; key cases; passport holders; umbrellas; baggage tags; tool bags, empty; leather, unworked or semi-worked.

Class 25: Clothing; headgear for wear; gloves [clothing]; sashes for wear; scarfs; girdles; footwear; hosiery; neckties; masquerade costumes.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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. These factors are known as the ‘Canon Criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

Contested goods in Class 18

Backpacks are identically contained in both lists of goods.

The contested tool bags, empty are included in the broader category of the opponent’s bags. Therefore, they are identical.

The contested travelling trunks are highly similar to the opponent’s bags. These goods have the same purpose and nature. They usually coincide in producer, relevant public, distribution channels and method of use.

The contested baggage tags are similar to the opponent’s travelling bags. These goods usually coincide in producer, relevant public and distribution channels.

The contested key cases; passport holders are similar to the opponent’s bags, as they usually coincide in producer, relevant public and distribution channels.

The contested leather laces are strings used to tie shoes. They show certain similarity to the opponent’s straps for luggage as they may have the same nature and may coincide in their general purpose of holding things or tying them together. They may coincide in their producers and end users. Therefore, they are at least similar to a low degree.

The contested walking sticks are similar to a low degree to the opponent’s rucksacks. Rucksacks can include rucksacks for hikers, which would have the same public as alpenstocks, hiking sticks and mountaineering sticks, which are included in walking sticks. Therefore, these goods may coincide in their usual producers, relevant public and distribution channels.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod. The Opposition Division concurs with the applicant that these contested goods are dissimilar to the opponent’s goods consisting of various types of luggage, bags, wallets and other carriers, as well as parts and accessories thereof. These goods serve different purposes (protection against weather conditions versus (principally storage) and methods of use. They are normally manufactured by different producers and do not have the same retail outlets. Moreover, they are neither in competition nor complementary (02/12/2019, R 836/2019‑4, Leeco / Lee et al., § 19).

The contested leather, unworked or semi-worked are raw materials and semi-processed goods. These goods are also dissimilar to the opponent’s goods, listed above. As the applicant correctly argued, the mere fact that leather may be used for the manufacture of some of the opponent’s goods (e.g. leather cases; travelling sets [leatherware] in Class 18) is not sufficient in itself to conclude that the goods are similar, as their nature, purpose and relevant public 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).

In its observations of 27/01/2020, the opponent argued that similarity between leather and imitations of leather and umbrellas versus articles of luggage, belts, briefcases, wallets, purses, bags and garment carriers in Class 18 was confirmed by the Board of Appeal (25/06/2008, R 1183/2007‑2, OKIHI (FIG. MARK) / oki-ni). However, it should be noted that the Board did not analyse any similarity between these goods in the above-mentioned decision, because, as it is apparent from § 17 and 23 of the decision, it considered that findings of the Opposition Division were final in this respect. The opponent also relied on another of the Board’s decision (21/12/2017, R 1443/2017‑5, R.B. / RB et al). It should be noted, however, that this decision was revoked by another decision of the Board with the same case number (07/12/2018, R 1443/2017‑5, R.B. / RB et al).

Contested goods in Class 25

The contested goods in this class are various types of clothing, headgear and footwear. These goods are used to cover parts of the human body and protect them against the elements, but they are also articles of fashion.

The opponent’s goods, such as bags or handbags in Class 18, are related to articles of clothing, headgear and footwear in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing, headgear and even footwear. As stated by the Court, goods such as clothing and handbags may, in addition to their basic function, have a common aesthetic function because they jointly contribute to the external image (‘look’) of the consumer concerned. This ‘look’ may be coordinated between clothing on the one hand and accessories such as handbags on the other (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 49-50). For this reason, the conflicting goods are often sold in the same outlets and the relevant consumer would not deem it unusual that they originate from the same manufacturers or are marketed under the same trade mark (10/09/2008, T‑96/06, exë, EU:T:2008:330, § 26-27). Therefore, and contrary to the applicant’s arguments, the contested goods in Class 25 are similar to, at least, the opponent’s bags; handbags in Class 18.

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 varying degrees are directed, primarily, at the public at large. Although some of the relevant goods, such as the opponent’s business card holders, target mainly business customers, they are also often purchased and used by the public at large. Given that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention of the relevant public is average. In particular, fashion items such as clothing and bags are everyday consumer goods for which the public consists of average consumers having an ‘average level of attention’ (09/02/2017, ZIRO, T‑106/16, EU:T:2017:67, § 20, and the case-law cited therein).

3. The signs

HORIZON
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 word mark ‘HORIZON’ and the contested sign is a figurative mark composed of two words, ‘HUMAN HORIZONS’, depicted in a standard and non-distinctive upper-case typeface.

As pointed out by both parties, the earlier mark ‘HORIZON’ and the contested sign’s word ‘HORIZONS’ will be understood by the relevant public as the singular and plural form, respectively, of a noun, meaning: 1) ‘the line at which the earth’s surface and the sky appear to meet’, 2) ‘(often horizons) the limit of a person’s knowledge, experience, or interest’ or, in geology, 3) ‘a layer of soil or rock, or a set of strata, with particular characteristics’ (information extracted from Lexico Dictionary on 11/05/2020 at www.lexico.com/definition/horizon). The applicant argued that the word ‘HORIZON’ used for luggage or travelling bags has only a low degree of distinctiveness and that it is an almost descriptive term, because it will be understood by the public as a description of the purpose of these particular goods. The Opposition Division disagrees with this statement. There is nothing descriptive in the word ‘HORIZON’ in relation to these goods. Although meaning 1), referred to above, could evoke some very vague and distant idea of travelling, it is too remote to affect the distinctiveness of the word ‘HORIZON’ in a material way. Ipso facto, the Opposition Division is of the opinion that the inherent distinctiveness of ‘HORIZON(S)’ for the relevant goods is average.

The contested sign’s verbal element ‘HUMAN’ will be understood by the public as an adjective, meaning ‘relating to or characteristic of humankind’ (information extracted from Lexico Dictionary on 11/05/2020 at www.lexico.com/definition/human). As it is not descriptive, allusive or otherwise weak in relation to the relevant goods, its inherent distinctiveness is average. However, it is positioned as an adjective that qualifies/describes the noun that follows it, as correctly argued by the opponent. Consequently, the word ‘HUMAN’ is conceptually subordinate to ‘HORIZONS’ and the relevant public is likely to pay more attention to the latter element than to the former one.

The contested sign has no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually and aurally, the earlier mark is included in its totality in the contested sign’s second verbal element ‘HORIZON’, with a slight difference that in the contested sign it appears with the letter ‘S’ at the end, denoting its plural form. This coinciding element is the longer one of the two elements of the contested sign. It will produce a nearly identical sound in both signs, only slightly affected by the letter ‘S’ in the contested sign.

The contested sign’s first verbal element, ‘HUMAN’, has no counterpart in the earlier mark and it will produce a largely different sound, in spite of the fact that its first and last letters (‘H’ and ‘N’) are identical to the respective letters of the earlier mark ‘HORIZON’. As explained above, the adjective ‘HUMAN’ is subordinate to the noun that follows it and, as such, it will attract less of the relevant public’s attention, despite being located at the contested sign’s beginning. The contested sign’s stylisation is non-distinctive and will not be given any trade mark significance. Moreover, it is aurally irrelevant.

The earlier mark will be pronounced in three syllables, and the contested sign in five. However, according to the case-law, a different number of syllables alone does not rule out similarity (17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 47-48; 28/10/2010, T‑131/09, Botumax, EU:T:2010:458, § 39).

Overall, the signs are visually and aurally similar to an above-average degree.

As regards the conceptual comparison, the applicant insisted that meaning 2) of the word ‘HORIZON’, namely ‘the limit of a person’s knowledge, experience, or interest’, is often used with the word ‘horizon’ in its plural form and, therefore, according to the applicant, both signs will be seen as referring to different concepts.

However, it is very clear from the dictionary entry referred to above that the singular form of the word ‘HORIZON’ may also be linked with this particular meaning. Therefore, it cannot be excluded that an important part of the relevant public will link both ‘HORIZON’ and ‘HORIZONS’ with the same meaning, despite being presented in singular/plural form respectively. The contested sign’s word ‘HUMAN’ will be associated with a different concept which, however, is conceptually subordinate to the coinciding word ‘HORIZON(S)’ and will have less impact on the public.

Therefore, the signs are conceptually similar to at least an average degree.

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 in the United Kingdom. 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 contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. 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 dissimilar goods cannot be successful. The examination will, therefore, proceed only for those goods that are identical or similar to any degree.

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all the 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 signs are visually and aurally similar to an above-average degree. As explained in section c) above, they are also conceptually similar to at least an average degree.

The earlier trade mark has a normal degree of distinctiveness for the relevant public, namely the public at large displaying an average degree of attention. Account is also 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 earlier mark, ‘HORIZON’, is entirely incorporated as the contested sign’s second verbal element, where it plays an independent and distinctive role. The only difference is in the letter ‘S’ at its end which, however, merely denotes a plural form of this noun and is likely to be overlooked by the public. Although the contested sign also differs in its first element, ‘HUMAN’, this element is shorter and conceptually subordinate to the noun that follows and, therefore, the relevant public is likely to focus more attention on the word ‘HORIZONS’ as the main identifier of trade origin of the contested goods.

Therefore, the presence of the adjective ‘HUMAN’ in the contested sign, although located at its beginning, is not sufficient to allow the consumers to safely distinguish between the marks and to exclude a likelihood of confusion. This applies, all the more, to the contested sign’s standard and non-distinctive stylisation which has no trade mark significance and is not sufficient to detract the public’s attention from the coinciding verbal element.

The applicant argued that the earlier trade mark is a one-word mark, while the contested sign is composed of two elements which will be easily noticed by the public. However, this is not sufficient to exclude a likelihood of confusion in the present case. While the public may perceive certain differences between the signs (in particular in the word ‘HUMAN’), likelihood of confusion includes the likelihood of association, which is especially relevant in the present case. It 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. Even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the use of the nearly identical word ‘HORIZONS’, that they are derived from the same undertaking or economically linked undertakings.

The relevant goods belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include different motifs and, for example, word plays with the original brand. It is therefore conceivable that the targeted public may regard the goods designated by the conflicting signs as belonging to two, admittedly distinct, ranges of products, originating, none the less, from the same manufacturer (18/02/2004, T‑10/03, Conforflex, EU:T:2004:46, § 61; 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Although some of the goods are similar to only a low degree, a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Therefore, a lower degree of similarity between some goods is compensated by visual and aural similarity between the signs, which is above average.

For the sake of completeness it is noted that in its observations, the applicant argued that the earlier trade mark had a low degree of distinctiveness, given that many trade marks include the word ‘HORIZON’. In support of its argument the applicant referred to eight trade mark registrations in the European Union and France (Annex HBP1). The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used.

Although the applicant also submitted two pages of Google search results for ‘horizon bag’ and ‘horizon luggage’ (Annex HBP2), these documents are undated and they concern various territories which are, mostly, outside of the United Kingdom or even outside of the European Union (e.g. designer-discreet.ru or snowandsurf.co.nz). In addition, as noted also by the applicant, some of these results concern the opponent’s goods. Consequently, these documents are not conclusive and they do not demonstrate that, before the date of filing of the contested application (i.e. 26/09/2018), consumers were exposed to widespread use of, and had become accustomed to, trade marks that include the word ‘HORIZON’, for the relevant goods. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, the differences between the signs are not sufficient to counteract their similarities and there is a likelihood of confusion, in the form of a likelihood of association, for the part of the relevant public (i.e. the public at large displaying an average degree of attention) in the United Kingdom. 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 United Kingdom trade mark registration No 3 190 220. It follows that the contested trade mark must be rejected for all the goods found to be identical or similar to any degree to those of the earlier mark.

The application may proceed for the remaining contested goods, namely umbrellas; leather, unworked or semi-worked in Class 18, which were found dissimilar.

The opponent has also based its opposition on French trade mark No 4 264 239 for the word mark ‘HORIZON’. Since this mark is identical to the one that has been compared and covers the same or a narrower scope of goods in Class 18 (mainly luggage, various bags, cases, holders and other carriers), the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Since the opposition is partially successful on the basis of the inherent distinctiveness of earlier United Kingdom trade mark registration No 3 190 220, there is no need to assess the enhanced degree of distinctiveness of this opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.