OPPOSITION No B 2 151 127

Automobili Lamborghini S.p.A., Via Modena, 12, 40019 Sant’Agata Bolognese (Bologna), Italy (opponent), represented by Audi AG/Bugatti International S.A. Klaus B. le Vrang, Patentabteilung, 85045 Ingolstadt, Germany (professional representative)

a g a i n s t

Arturo Di Modica, 253 Church Street, New York, NY 10013, United States of America (applicant), represented by Pronovem Marks Socièté Anonyme, avenue Josse Goffin 158, 1082 Bruxelles, Belgium (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 151 127 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 304 516. The opposition is based on European Union trade mark registrations No 3 968 252 and No 4 696 837, in relation to which the opponent invoked Article 8(1)(b) EUTMR, and European Union trade mark registration No 1 098 375, in relation to which the opponent invoked Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registrations No 3 968 252, No 4 696 837 and No 1 098 375.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 19/12/2012. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 19/12/2007 to 18/12/2012 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark No 3 968 252, for the figurative mark

Class 14: Jewellery, precious stones.

Class 18: Leather goods made of leather or leather imitation, included in class 18; trunks and travelling bags; umbrellas and parasols.

Class 20: Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware not included in other classes.

Class 25: Clothing, footwear, headgear.

European Union trade mark No 4 696 837, for the figurative mark

Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors.

European Union trade mark No 1 098 375, for the figurative mark

Class 12: Vehicles and their constructive parts, boats.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 02/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/11/2015 to submit evidence of use of the earlier trade marks. This was extended until 02/01/2016. On 17/12/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Attachments 1-12: a set of 12 invoices dated from 19/12/2007 to 24/07/2008, addressed to customers in the USA and Canada, including references to the marks ‘AUTOMOBOLI LAMBORGHINI’ and , and the trade mark device at the top right of the invoices. The sales are of clothes, including leather jackets, headwear, bags, leather and nickel card holders, document holders, wallets, mouse pads, silver and gold crest cufflinks, towels, magnets, mugs, thermos flasks, notepads, calendars, posters, post cards and model cars.

• Attachment 13: the cover page and two other pages of the catalogue ‘Automobili Lamborghini Collection’, dated spring/summer 2008, including photographs of a bag, a t-shirt and a key holder bearing the mark .

• Attachments 14-17: pictures of articles mentioned in the invoices, including caps, t-shirts, polo shirts, jackets, pullovers, shoes, ties, mugs, cups, plates, thermos flasks, crest cufflinks, key holders, bags, back packs, scarves and gloves, bearing, inter alia, the marks , and .

• Attachment 18: a copy of a licence agreement between the opponent and Albanu Sam concerning the production and sale of bracelets made of bull horn/leather.

• Attachment 19: copies of invoices of the opponent referring to the delivery of bracelets, with the mark at the top right of the invoices.

• Attachment 20: a photograph of a bracelet bearing the mark .

In addition, on 19/05/2015, the opponent provided the following evidence to demonstrate the reputation of the bull device on Lamborghini automobiles:

• Attachment 1: 17 different front covers of books about Lamborghini cars, with a raging bull on the covers, for example , , , , and .

• Attachment 2: a screenshot of the top of the web page http://en.wikipedia.org/wiki/Lamborghini to show the logo of the company, including the bull, and that it is directly associated with the reputation and image of the brand Lamborghini. It appears as .

According to Article 15(1), second subparagraph, point (b) EUTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

The evidence demonstrates that the goods were manufactured in Italy and sold in the USA and Canada. This clearly shows that the goods were exported from the relevant territory.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

All of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices and the catalogues – even though the number of invoices is quite low – provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

However, according to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, registered European Union trade marks No 3 968 252 and No 4 696 837, and , respectively, have been used in the invoices and in the licence agreement as , but have also been used as registered, for example in the photographs and catalogues.

Even though the marks are not always used in an identical way to how they were registered, or consist of more elements, the use of the marks in the documents does not alter the distinctive character of the mark from the form in which it was registered.

The photograph in Attachment 20 shows the mark on a bracelet in a different colour from that in which it was registered. However, using different colours is not considered an alteration of the distinctiveness of the earlier mark.

In view of the above, the Opposition Division considers that the evidence does show use of the signs as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288.)

In the present case, the evidence proves use only for bracelets, crest cufflinks, key holders, bags, back packs, leather card holders, document holders, wallets, mugs, cups, plates, thermos flasks, t-shirts, polo shirts, jackets, pullovers, scarves, gloves, ties, shoes and caps. These goods can be considered to form objective sub-categories of jewellery in Class 14; leather goods made of leather or leather imitation, included in class 18 in Class 18; household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware not included in other classes in Class 21; and clothing, footwear, headgear in Class 25. Therefore, the Opposition Division considers that the evidence demonstrates genuine use of the trade mark only for the following goods:

Class 14: Bracelets, crest cufflinks, key holders.

Class 18: Bags, back packs, leather card holders, document holders, wallets.

Class 21: Mugs, cups, plates, thermos flasks.

Class 25: T-shirts, polo shirts, jackets, pullovers, scarves, gloves, ties, shoes, caps.

However, the evidence does not demonstrate use for any of the goods in Class 20 of European Union trade mark registration No 3 968 252, in Class 8 of European Union trade mark registration No 4 696 837 or in Class 12 of European Union trade mark registration No 1 098 375.

The evidence filed by the opponent to substantiate the reputation of earlier European Union trade mark registration No 1 098 375 for goods in Class 12 – consisting of covers of books showing photographs of cars and an excerpt from a website with information about the Lamborghini brand – does not provide sufficient indications concerning the extent of the use of this earlier mark.

As a result, the opponent has not shown use for European Union trade mark registrations No 4 696 837 and No 1 098 375. Consequently, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR as far as it is based on these earlier marks.

Therefore, the Opposition Division will consider only the abovementioned goods covered by earlier European Union trade mark No 3 968 252 in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

Considering the above, the opposition on the ground of Article 8(1)(b) EUTMR is based on the opponent’s earlier trade mark No 3 968 252.

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 14: Bracelets, crest cufflinks, key holders.

Class 18: Bags, back packs, leather card holders, document holders, wallets.

Class 21: Mugs, cups, plates, thermos flasks.

Class 25: T-shirts, polo shirts, jackets, pullovers, scarves, gloves, ties, shoes, caps.

The contested goods are the following:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; sculptures and statuettes made of (non-precious) metal, steel, bronze.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors; tableware (knives, forks and spoons).

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; sculptures and statuettes made of precious metal.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; sculptures and statuettes of marble, stone, concrete.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, notably, sculptures and statuettes made of these materials.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; sculptures and statuettes of glass, ceramic, crystal, porcelain, terracotta, earthenware; cups and dishes, not of precious metal, tableware, other than knives, forks and spoons.

Class 25: Clothing, footwear, headgear.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large. The degree of attention paid by consumers during their purchase is deemed to vary from average to higher than average, since some of them can be expensive and are infrequently purchased (e.g. jewellery). For other goods, the attention paid will be average (e.g. bags).

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 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 a black shield device with a grey border, inside which are the word elements ‘AUTOMOBILI LAMBORGHINI’ at the top in grey upper case letters, with an attacking bull underneath. The bull’s head and upper body are leaning to the right and it is looking to the ground.

The contested mark is also a figurative mark, consisting of a raging bull in the middle, with a raised head, looking at the viewer, with the upper case letters ‘CHARGING BULL’ above it and ‘AMSTERDAM’ below it. Directly underneath the bull and to the left is a copyright sign, the year ‘1998’ and the name ‘ARTURO D. MODICA’. Below the bull on the right-hand side is a large fingerprint in red with an artistic signature, ‘AD MODICA’, across the fingerprint and a date next to it.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The contested mark has no elements that could be considered clearly more distinctive than other elements. However, the copyright symbol connected to the year ‘1998’ will be seen as an indication of the year of the copyright, and not as a part of the trade mark itself; therefore, this element is non-distinctive.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The figurative element, the bull, in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the figurative depiction of an attacking bull. However, there are significant differences in the depictions of the bull between the signs. The bull in the earlier mark is leaning and facing down to the lower right, with its horns pointing forward and its tail raised upwards in an ‘S’ shape. In the contested sign, the bull has its head raised, is looking straight at the viewer and has its mouth open. The signs also differ in their other elements: in the earlier mark, the black shield device with a grey border and the words ‘AUTOMOBILI LAMBORGHINI’ at the top of the shield, which have no counterparts in the contested sign; in the contested sign, the word elements ‘CHARGING BULL’, ‘AMSTERDAM’, the copyright sign with the year ‘1998’ and the name ‘ARTURO D. MODICA’, and the red fingerprint with the signature and date, which have no counterparts in the earlier sign.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Taking all this into account, the signs are visually similar to an average degree.

Aurally, as the signs do not coincide in any element, it is concluded that the signs are not aurally similar.

Conceptually, the relevant public will perceive the concept of a charging or attacking bull in both signs. The words ‘CHARGING BULL’ in the contested mark reinforce this conceptual association for the English-speaking part of the relevant public. Other consumers may not see this link, as the words ‘CHARGING BULL’ may be seen as meaningless.

The verbal element ‘AMSTERDAM’ in the contested sign will be understood by the relevant public as the capital city of the Netherlands.

The copyright sign with the year and name, the red fingerprint and the signature will be understood as an imprint of an artist by most of the relevant public. The copyright sign and the year are non-distinctive, as described above.

The verbal element ‘AUTOMOBILI’ is the plural form of the Italian word ‘automobile’, which means ‘automobile’ in English and will be understood as such by the part of the public for which identical or similar words exist in their languages, such as ‘automobile’ in English or ‘automovil’ in Spanish. The word ‘LAMBORGHINI’ in the earlier mark will be perceived as an Italian surname.

However, as the signs will be associated with the same meaning, namely a fighting bull, 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 marks

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 this 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.

e) Global assessment, other arguments and conclusion

In the present case, the goods have been assumed to be identical. They target the public at large. The degree of attention will vary from average to high.

The signs are aurally dissimilar and visually similar to an average degree. They are conceptually similar to the extent that they coincide in the concept of a charging bull. However, the marks have different structures, as the earlier mark is composed of a black shield with the words ‘AUTOMOBILI LAMBORGHINI’ written on it and the depiction of a bull underneath, whereas the contested mark gives the impression of a painting or piece of art, since it is easy to perceive the fingerprint and the signature of the artist underneath the bull. This perception is reinforced by the copyright sign under the image of the bull. Furthermore, the Court has indicated that it is not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion. This will be the case where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public. However, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion. The mere association which the public might make between two trade marks as a result of their analogous content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision (11/11/1997, C‑251/95, Sabél, EU:C:1997:528, § 24-26). In the present case, the figurative depiction of the bull is not sufficient to constitute a likelihood of confusion. An animal can be represented in a broad variety of ways, and it cannot be assumed that a likelihood of confusion may exist just because the same animal is represented in the confronted marks (14/03/2014, R 514/2013-2, Tauro Sport Auto (fig.)/Automobili Lamborghini (fig.) et al., § 30).

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, in the overall impressions conveyed by the signs, the differences between the marks mean that the signs can be distinguished effectively, even for identical goods.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practise has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. The signs are not comparable. For example, in the decision of 23/12/2013, 7 656 C, the marks in question were both word marks.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Agueda MAS PASTOR

Lena FRANKENBERG GLANTZ

Victoria DAFAUCE MENÉNDEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.