OPPOSITION Nо B 3 112 777

 

Mustang - Bekleidungswerke GmbH + Co. KG Karl-Kurz-Straße 44/1, 74523 Schwäbisch Hall, Germany (opponent), represented by Cöster & Partner Rechtsanwälte mbB, Theodorstr. 9, 90489 Nürnberg, Germany (professional representative) 

 

a g a i n s t

 

Hästens Sängar AB, Nya Hamnvägen 7, 731 36 Köping, Sweden (applicant), represented by Advokatfirman Vinge KB, Smålandsgatan 20, 111 87 Stockholm, Sweden (professional representative).

 

On 18/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 112 777 is rejected in its entirety.

 

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

 

REASONS

 

On 28/02/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 161 210 (pattern mark), namely against some of the goods in Class 25. The opposition is based on EUTM registration No 357 392 . The opponent invoked  Article 8(1)(b) EUTMR.

 

 

PROOF OF USE

  

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

 

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 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 goods on which the opposition is based are, inter alia, the following:

 

Class 25: Clothing, corsets, sportswear, clothing of leather, belts, shoes, footwear for sports, headgear.

 

The contested goods are the following (after limitation of the list of goods in Class 25 on 26/05/2020):

 

Class 25: Clothes, namely pyjamas, night gowns and robes; slippers and down socks; night caps and sleep masks.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

 

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The contested pyjamas; night gowns and robes are included in the broad category of the opponent’s Clothing. Therefore, they are identical.

The contested slippers and down socks are included in the broad category of the opponent’s Shoes. Therefore, they are identical.

The contested  nightcaps are included in the broad category of the opponent’s Headgear. Therefore, they are identical.

The contested Sleep masks coincide in distribution channels and producers with the opponent’s Clothing.. The goods at issue are lowly 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 to a low degree are directed at the public at large.  The degree of attention is considered to be average.

c) The signs

 

Earlier trade mark	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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark. The applicant argues that the mark consists of a device with two horses, one in black and one in white, that are galloping side by side as if they are competing in a horse race. In the opinion of the Opposition Division, the earlier mark may be also perceived as a running black horse with a white contour.

The contested trade mark is a pattern mark. A pattern mark is a trade mark consisting exclusively of a set of elements that are repeated regularly. The sign consists of a square device with four inner boxes, in the colours grey and dark grey, all with a woven structure, with a black horse in the upper right box and in the lower left box.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements. 

 

Visually, the signs coincide in the representation of horses. However, the horses are depicted moving in very different ways. The earlier mark shows one or two fast running horses, as if in a competition or in a race. The contested sign represents a square device with four inner boxes. The depiction of the horse is in the upper right box and in the lower left box. The representations of the horse motifs are different in the shape of the manes, in the position of the legs and also in the tails. The shape of the nose is rather defined in the earlier mark and barely perceptible in the contested mark. The horse in the earlier mark is running and more dynamic than the horse(s) in the contested mark. The horse is the contested mark is not in a rush and it is not running fast forward. The depiction of the horse in the contested sign is rather unusual and therefore noticeable.

Therefore, the signs are similar to a low degree.

Purely figurative marks are not subject to an aural assessment. As both marks are purely figurative, it is not possible to compare them aurally.

 

Conceptually, the public in the relevant territory will perceive the signs with a content of horse(s) in motion. The earlier mark shows a horse or two horses running very fast. The motion is very dynamic. The contested mark shows a trotting horse, in no rush. The appearance and the motion of the horse(s) in the marks are different.

Taking into account that the contested mark is a pattern mark, in which the elements repeat themselves regularly, the signs are conceptually similar.

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 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 goods were found partially identical and partially similar to a low degree. The earlier trade mark’s degree of distinctiveness is normal. The level of attention of the relevant public is considered as average.

The signs were considered to be visually lowly similar and conceptually similar. As both marks are purely figurative, it is not possible to compare them aurally.

The different depictions (the appearance, motion, dynamic) of the horse motifs in the signs lead to a different overall impression. Furthermore, the contested mark is a pattern mark in which the elements are repeated regularly.

‘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). Therefore, the considerable visual differences between the signs caused by the figurative elements are particularly relevant when assessing likelihood of confusion between them.

 

It is held that the mere coincidence in the representation of a horse or horses is not enough for a finding of likelihood of confusion. The differences between the marks will be sufficient to outweigh their similarities such that the entire relevant public in the EU is able to safely distinguish between the contested mark and the earlier trade mark.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

 

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

 

 

Lucinda CARNEY

Judit NÉMETH

Michaela SIMANDLOVA

 

 

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.