OPPOSITION No B 3 080 002

Meta S.R.L., Via 2 Giugno, n. 126 Loc. Castelluccio, 52010 Capolona (Ar), Italy (opponent), represented by Luca Pierannunzio, Via Carlo Collodi n. 5, 06012 Città di Castello (Pg), Italy (professional representative)

a g a i n s t

AB Dogman, P.O. Box 100, 265 22 Åstorp, Sweden (applicant), represented by Awa Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative)

On 31/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 002 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 973 113 for the figurative mark , namely against all the goods in Class 25. The opposition is based on Italian trade mark registration No 1 036 267 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant. However, the applicant did not submit the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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

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

Class 25: Clothing; footwear; headgear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear; Riding shoes, riding boots, jodhpurs, riding jackets, riding coats, riding gloves.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods.

The contested riding shoes, riding boots, jodhpurs, riding jackets, riding coats, riding gloves are included in the broad categories of the opponent’s footwear and clothing respectively. 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 are directed at the public at large whose degree of attention will be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 consisting of the verbal element 'ASCOT SPORT' depicted in fairly standard black upper case letters under which there is a figurative element. The figurative element consists of a laurel wreath, made up of two curved branches, which is open at the top and in the middle of which there is a silhouette of a horse head and neck, both components of which are black.

The contested sign is a figurative mark consisting of the verbal elements 'JACSON' and 'EQUESTRIAN' depicted over two lines above which there is a figurative element. The word 'JACSON' is depicted in fairly standard black upper case letters whereas the much smaller word 'EQUESTRIAN' underneath is depicted in grey standard upper case letters in between two hyphens. The figurative element consists of a fully closed circular laurel wreath in grey in the middle of which there is a silhouette of a horse head and neck in black.

The word 'ASCOT' in the earlier mark may be perceived at least by a part of the public in the relevant territory as a reference to a place in England which has become famous for horse racing, whereas another part may simply perceive it as a fanciful word without any meaning. Either way, since it will not be perceived as having any particular meaning in relation to the goods concerned, it is distinctive to a normal degree. The word ‘SPORT’ on the other hand is a basic English word meaning, inter alia, 'an individual or group activity pursued for exercise or pleasure, often involving the testing of physical capabilities and taking the form of a competitive game such as football, tennis, etc.'. This English word has also been incorporated into the Italian language (www.grandidizionari.it/Dizionario_Italiano/parola/S/sport.aspx?query=sport consulted on 26/03/2020). Therefore, the word ‘SPORT’ in the earlier mark will be perceived by the relevant public merely as a reference to the type of goods concerned and it is, therefore, non-distinctive as such.

The word 'JACSON' in the contested sign will be perceived by a significant part of the public in the relevant territory as a reference to a foreign given name or surname, although it cannot be fully excluded that a small part may simply perceive it as a fanciful word without any meaning. Either way, since it will not be perceived as having any particular meaning in relation to the goods concerned, it is distinctive to a normal degree. The word ‘EQUESTRIAN’ on the other hand is an English word meaning 'of or relating to horses and riding' and will be understood by the relevant public as having this meaning since the equivalent Italian word is very close, namely ‘equestre’. Therefore, the word ‘EQUESTRIAN’ in the contested sign will be perceived by the relevant public merely as an indication that the goods concerned are related to horse riding and it is, therefore, non-distinctive as such.

As regards the figurative element in both signs, laurel wreaths are commonplace and allude to the exclusivity or high quality of the goods (04/03/2019, R 1829/2018-5, Triumph (fig) / TRIUMPH (fig), § 35) and the silhouette of a horse head and neck will be perceived by consumers as an indication that the goods concerned are related to horse riding (07/06/2012, R 2155/2011-1, LESON (fig. mark) / Lescon (fig. mark, § 26). Therefore, the figurative element in both signs will be perceived as a weak element by consumers. Furthermore, 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). Therefore, the verbal element 'ASCOT' in the earlier mark and the verbal element 'JACSON' in the contested sign will be perceived by consumers as the most distinctive element in the respective signs.

The opponent argues that the figurative element in both signs is distinctive to a normal degree in relation to the goods concerned in Class 25 since there is nothing in their description to the effect that they relate to goods specifically for horse sport. However, this is incorrect, the contested goods explicitly include riding shoes, riding boots, jodhpurs, riding jackets, riding coats and riding gloves which were found identical to the opponent’s goods to the extent that they also include such goods. Furthermore, even if the broader categories of clothing, footwear and headgear in the specifications of both signs do not expressly concern goods for horse riding, they do not exclude them either. Moreover, the perception by consumers that the goods concerned are related to horse riding or horse sport is further reinforced by the verbal elements 'SPORT' and 'EQUESTRIAN' respectively. Therefore, it must be considered that in relation to both the broader categories of goods concerned as well as the specific items of riding clothing and footwear as listed above, the relevant public will perceive the figurative element in both signs as only weakly distinctive for the reasons set out above.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements, whereas in the contested sign the figurative element and the verbal element 'JACSON' are co-dominant in view of the much smaller size and position of the additional verbal element 'EQUESTRIAN' at the bottom of the contested sign.

Visually, the signs coincide to the extent that they both feature a figurative element consisting of a laurel wreath with the silhouette of a horse head and neck in the middle. However, while the laurel wreath in the earlier mark is black and depicted in a more classical way with two compact curved branches which are open at the top, the laurel wreath in the contested sign is grey and made up of an airy fully closed circle. Moreover, while the silhouette of the horse head in the earlier mark is also depicted in a more classical way with two ears, an eye, the muzzle and the mouth and with a broad neck, the silhouette of the horse head in the contested sign has a more stylised modern look with only one ear and an eye and with a thin neck. Although the average consumer will not engage in an analysis of the various details of the figurative elements of the signs, the differences described above still make the overall impression they produce rather distinct.

Furthermore, the signs differ in all other aspects as described above and while the verbal element 'ASCOT SPORT' of the earlier mark is depicted above its figurative element, the verbal elements 'JACKSON' and 'EQUESTRIAN' are depicted underneath its figurative element. In addition, even if the figurative element in both signs is co-dominant, the most distinctive elements of the signs are the words 'ASCOT' and 'JACSON' respectively, which – even if they share some of their letters – are not visually similar. In this respect, the fact that both of these words are depicted in black upper case letters in a similar type face as argued by the opponent cannot outweigh the fact that the words as such are completely different, since the type faces in question are fairly standard and will not detract the consumers’ attention away from the verbal elements themselves.

Therefore, the signs are visually similar to at most a low degree overall.

Aurally, regardless of which verbal elements are pronounced by consumers when referring to the respective signs, i.e. 'ASCOT SPORT' or only 'ASCOT' in the earlier mark and 'JACKSON EQUESTRIAN' or only 'JACKSON' in the contested sign, as they do not aurally coincide in any element, the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide to the extent that they will be associated with a laurel wreath and the silhouette of a horse head and neck. However, as described in the visual comparison above, the figurative elements are depicted in rather distinct ways in both signs. Furthermore, the concepts conveyed by these elements are weak. The earlier mark will also be associated with the concept of 'sport' and the contested sign with the concept of 'equestrian' as set out above which are however non-distinctive as such. However, the signs also contain the verbal elements 'ASCOT' and 'JACSON' respectively which are the most distinctive elements in both signs and on which consumers will focus their attention. These verbal elements will either be perceived as conveying different distinctive concepts as described above, one of the two will be perceived as conveying a concept while the other will not or, for a small part of the public, neither of these words may be perceived as conveying any meaning at all and will thus remain conceptually neutral.

Therefore, the signs are conceptually similar to at most a below 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.

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, despite the presence of some non‑distinctive or weak elements in the mark, as stated above in section c) of this decision.

5. 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).

In the present case, the goods concerned are identical and the degree of attention of the relevant public is average.

The earlier mark as a whole is distinctive to a normal degree but the signs have been found aurally not similar, visually similar to at most a low degree and conceptually similar to at most a below average degree.

The opponent argues that there will be a likelihood of confusion between the signs, or at least a likelihood of association between them, in view of their coincidence in a figurative element consisting of a laurel wreath and the silhouette of a horse head and neck, in particular bearing in mind that consumers will not be able to make a direct comparison between the signs. However, the impact of this weak element on consumers is limited when assessing the likelihood of confusion between the signs in dispute. Consumers will primarily retain and recall the respective distinctive verbal elements in the signs, namely 'ASCOT' in the case of the earlier mark and 'JACSON' in the case of the contested sign, regardless of whether or not they will perceived as conveying any meaning.

Furthermore, even if it is true - as argued by the opponent - that the choice of the clothing, footwear and headgear articles concerned is normally made following a visual inspection of the goods and that the visual aspect thus plays a greater role in the global assessment of the likelihood of confusion, for the reasons set out above in section c) of this decision, the signs are only visually similar to at most a low degree overall. In this respect, the average consumer, who will display an average degree of attention and who is reasonably well informed and reasonably observant and circumspect, will readily be able to perceive and recall the considerable visual differences between the signs.

Considering all the above, even if the goods concerned are identical and even if there is a certain degree of similarity between the signs on account of their coincidence in a figurative element consisting of a laurel wreath and the silhouette of a horse head and neck, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR. 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, 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.

The Opposition Division

Lena FRANKENBERG GLANTZ

Sam GYLLING

Kieran HENEGHAN

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.