OPPOSITION Nо B 3 124 167

 

Impetus Portugal-Têxteis, S.A., Rua da Fabrica, 45 Apúlia, 4740-141 Esposende, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative) 

 

a g a i n s t

 

Mingxia Yi, No.151 Sanli Village, Meixian Town, Pingjiang County, Hunan Province, People's Republic of China (applicant), represented by Würth & Kollegen, Auf dem Berge 36, 28844 Weyhe, Germany (professional representative).

On 19/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 124 167 is rejected in its entirety.

 

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

 

REASONS

 

On 16/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 205 902 (figurative mark), namely against all the goods in Class 18. The opposition is based on European Union trade mark registration No 2 497 543 ‘IMPETUS’ (word mark). 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.

a) The goods

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

Class 25: Articles of clothing, footwear and headgear.

The contested goods are the following:

Class 18: Leather leashes; leather leads; muzzles; collars for animals; harness for animals; girths of leather; covers for animals; mountaineering sticks; walking sticks; walking stick seats.

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.

 

The opponent’s articles of clothing, footwear and headgear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

  

The contested leather leashes and leather leads are long thin pieces of leather used to walk or control a dog or other animal; muzzles are objects that are put over a dog’s nose and mouth so that they cannot bite people or make noise; collars for animals are bands of leather which are put round the neck of a dog or cat;  harness for animals are the gear or tackle with which a draft animal pulls a vehicle or implement; girths of leather are leather straps which are fastened firmly around the middle of a horse to keep the saddle or load in the right place; covers for animals are meant to cover/protect the animals’ bodies; mountaineering sticks, walking sticks and walking stick seats are canes or other stuffs used as aids for walking.

The nature of these contested goods is very different from that of the opponent’s articles of clothing, headgear and footwear in Class 25. They serve very different purposes, have different method of use and do not usually share the same distribution channels. They are not usually made by the same manufacturers. They are neither complementary nor in competition. These goods are considered dissimilar.

The opponent refers to the previous decision of the Office, namely, decision of 25/01/2016, B 2 437 708, where the comparison was made between the opponent’s goods made of these materials and not included in other classes (‑ leather and imitations of leather) in Class 18 and the contested belts, shoes and clothes, excluding clothes for babies and children in Class 25. It was stated that the opponent’s goods include goods such as bags, handbags, sports bags, briefcases, wallets, purses, key cases, etc. that are related to articles of clothing, headgear and footwear in Class 25, including the contested belts, shoes and clothes, excluding clothes for babies and children. The Opposition Division stated that this is because consumers are likely to consider these goods in Class 18 as complementary accessories to articles of outer clothing, headgear and even footwear, as the former are closely co-ordinated with the latter. Since the contested goods in Class 18 under comparison in the present proceedings are not the same as those in the cited decision, the invoked case referred to by the opponent is not relevant to the present proceedings.

  

b) Conclusion 

 

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods  are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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

 

 

Julia GARCÍA MURILLO

Marzena MACIAK

Saida CRABBE

 

 

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.