OPPOSITION No B 3 100 261

The Polo/Lauren Company L.P., 650 Madison Avenue, 10022 New York, United States of America (opponent), represented by Cabinet Cande-Blanchard-Ducamp, Avenue de Messine 5, 75008 Paris, France (professional representative)

a g a i n s t

Custimikelo S.L., C/ Adra 1, 14800 Priego de Cordoba, Spain (applicant), represented by Pons Patentes Y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 03/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 261 is upheld for all the contested goods.

2. European Union trade mark application No 18 093 811 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 093 811 for the figurative mark . The opposition is based on French trade mark registration No 3 156 713 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 25: Clothing, shoes, headgear.

The contested goods are the following:

Class 25: Clothing; footwear [excluding orthopedic footwear]; headgear.

Clothing; footwear [excluding orthopedic footwear]; headgear are identically contained in both lists of goods (including synonyms).

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 must, in the absence of further details concerning their possible status as luxury goods, be regarded as goods for everyday consumption and as directed at members of the general public, who are not expected to pay a particularly high degree of attention to them (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 34, and the case-law cited therein). Therefore, the degree of attention of the relevant public in relation to the relevant goods is average (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 35).

c) The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both marks depict a polo player on a galloping horse who is wielding a mallet in an upright position. This figurative element is the sole element in the earlier mark and precedes (appears to the left of) the verbal elements in the contested sign.

The verbal elements ‘CUSTI MIKELO’ in the contested sign will be perceived as meaningless and are normally distinctive.

The image of a polo player, present in both marks, has a normal degree of inherent distinctive character in relation to the relevant goods in Class 25 given that they can be used for playing polo, although there is nothing in their description to suggest that the related goods are specifically designed for that purpose (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49).

The signs have no elements that are more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their figurative elements, which both depict a polo player on a galloping horse who is wielding a mallet in an upright position. The figurative elements are depicted in black. Although there are some visual differences in the elements, for example, the horse is depicted in more detail in the earlier mark and positioned to the left in the contested sign, these slight differences are not sufficient to reduce the similarity between the figures of a polo player on a galloping horse, wielding a mallet in an upright position. In both cases, the public will clearly recognise and remember the image of a mounted polo player. The marks differ in the verbal elements placed to the right of the figurative element in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative (the earlier mark), it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of their figurative elements depicting a polo player on a galloping horse who is wielding a mallet in an upright position, the signs are conceptually similar to 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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.

e) Global assessment, other arguments and conclusion

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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all 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 earlier mark has an inherent average degree of distinctiveness.

The relevant public is the public at large and the level of attention is average.

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).

The signs are visually and conceptually similar to an average degree. Aurally, as the earlier mark is purely figurative, it is not possible to compare them.

Taking into account the identity of the conflicting goods and the average visual and conceptual similarity, it is considered that the relevant public might be led to believe that the identical goods come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 156 713. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Carlos MATEO PÉREZ

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.