CANCELLATION No C 45 010 (INVALIDITY) 

 

Mustang - Bekleidungswerke GmbH + Co. KG, Karl-Kurz-Straße 44/1, 74523 Schwäbisch Hall, Germany (applicant), 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  (EUTM proprietor), represented by Advokatfirman Vinge KB, Smålandsgatan 20, 111 87 Stockholm, Sweden (professional representative).

 

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

 

 

DECISION

  

1.	The application for a declaration of invalidity is rejected in its entirety.

 

2.	The applicant bears the costs, fixed at EUR 450.

 

REASONS

 

On 17/07/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 180 223 (pattern mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 25. The application is based on EUTM registration No 357 392  . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues there exists a likelihood of confusion on the part of the public.

The EUTM proprietor requests that the applicant proves use of the earlier mark. The request covers all goods and services that the cancellation action is based on.

The EUTM proprietor argues that the trade marks are not identical or confusingly similar and that there is no likelihood of confusion. The EUTM proprietor states that the earlier trade 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. The horses are overlapping and the black horse is in the foreground. The horses are not identical, which is clear from the shapes of the tails.

The contested trade mark consists of a square device with four inner boxes, in light beige and darker beige, all with a woven structure, with a white horse in the upper right box and in the lower left box. It is the same horse device in both boxes. The horse is not galloping but trotting. The darker beige boxes have no horse devices.

The fact that a trade mark contains or is dominated by the shape of an animal does not mean that the proprietor has the exclusive right to all possible graphic representations of that animal. The applicant does not have exclusive right for all trade marks containing horses for goods in Class 25. The applicant has not claimed or showed that its trade mark enjoys ‘extended protection’.

A brief search in the EUIPO register shows that Mustang is not the only proprietor of a trade mark containing horse(s) in class 25. A search carried out by the EUTM proprietor gave 1087 search results. Most of the horse devices do not include any rider, polo player or knight.

The EUTM proprietor argues that the applicant’s device consists of two horses running side by side. They are running very fast. It seems to be a competition and that the black horse in the foreground is trying to catch up with the white horse which is leading with just one nose length.

The EUTM proprietor’s device mark does not only consist of a horse in duplicate, but also of a beige check trade mark with four boxes, with different beige shades, with a detailed woven structure. The horse has a tall and proud appearance, trotting in a controlled way and in no rush. The earlier trade mark gives associations to something fast and competitive, whereas the contested trade mark gives associations to something snug and welcoming. Therefore, the signs suggest completely different ideas.

Purely figurative marks cannot be pronounced. Both trade marks are device marks without any word elements.

The trade mark search result is submitted.

The applicant argues that the two signs are aurally identical, or at least very similar. In case the consumers would aurally describe the two figurative marks they would call them both ‘horses’. Visually, the signs are very similar. They coincide in the presentation of horses, which are moving. The representation shows the horses with the horse’s head on the right side of the pictorial representation and the tail on the left side. Both trade marks show horses without a rider. The marks have just the element of horses which could be considered clearly as dominant. Conceptually, the signs are very similar. Both signs show representations of horses in motion, which are identically depicted as silhouettes. Running horses stand for beauty, elegance and power. The conceptual content/substance of the signs under comparison is limited to horses in motion and is thus identical.

Furthermore, the applicant submits evidence of use of the earlier mark. The applicant has been engaged in designing, manufacturing, marketing and selling all types of clothing, footwear, headgear and other fashion accessories already since the year 1932. The use of the trade mark has been extensive not only in terms of geographical spread involving several countries but also in physical volume of use. The applicant has used the mark ’horses’ since the 1950s and very extensively for a wide range of products in the field of clothes, especially for jeans, shirts, caps and shoes and also for pyjamas and other sleepwear.

The contested goods are identical or at least very similar to the applicant’s goods.

The EUTM proprietor does not object that the applicant has put its trade mark to genuine use for certain clothing, footwear and headgear. However, Mustang has under no circumstances shown use of its trade mark on robes, slippers, down socks, night caps and sleep masks. Furthermore, the evidence of use clearly shows that the trade marks are aimed at completely different consumers, both regarding use and price segment. Finally, the similarity of the trade marks is not sufficient to create a likelihood of confusion, even if the goods were to be considered similar or identical.

The applicant and the EUTM proprietor have been co-existing already for some 24 years using trade marks for different horse devices for goods in Class 25. The EUTM proprietor has already limited the registration in Class 25. Furthermore, there is no risk that the average consumer would confuse the commercial origin or believe that there is a business connection between the parties, neither in the relevant purchasing situations nor when seeing the trade marks on the products. The applicant and the EUTM proprietor directs its products to very different consumers. The EUTM proprietor is a highly exclusive bed company that also sells bedding, bed linen and sleepwear. All products are sold in the proprietor’s store and via a small number of selected high-end retailers. The applicant is a high-street fashion company directed at young people and lacks any connection to the sale of premium bed and bed accessories.

PROOF OF USE

 

Proof of use of the earlier mark was requested by the  EUTM proprietor. However, at this point, the Cancellation 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 invalidity request 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 applicant’s case can be considered.

 

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application 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: 

 

Class 25: Clothing; Pyjamas; Nighties; Lounging robes; Shoes; Slippers; Socks; Hats; Nightcaps; Sleep masks; Neck scarves [mufflers].

Clothing; Shoes are identically contained in both lists of goods.

The contested pyjamas; nighties; lounging robes; socks; neck scarves [mufflers] are included in the broad category of the applicant’s Clothing. Therefore, they are identical.

The contested slippers are included in the broad category of the applicant’s Shoes. Therefore, they are identical.

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

The contested sleep masks coincide in distribution channels and producers with the applicant’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 EUTM proprietor 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 Cancellation 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 pattern of squares with four inner boxes, in the colours light beige and darker beige, all with a woven structure, with a white horse in the upper right box and in the lower left box. It is the same horse device in both boxes.

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 pattern of squares 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 applicant 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.

Conclusion

 

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected.

 

Given that the application is not well founded under Article 8(1) EUTMR in conjunction with Article 60(1)(a) EUTMR, there is no need to examine the evidence of use submitted by the applicant.

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

 

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

 

 

The Cancellation 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.