OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)


Opposition Division



OPPOSITION No B 2 295 544


Lifestyle Equities C.V., Prins Bernhardplein 200, 1097 JB Amsterdam, the Netherlands (opponent), represented by Dimitri Russo S.R.L., Via G. Bozzi, 47A, 70121 Bari, Italy (professional representative)


a g a i n s t


Royal County of Berkshire Polo Club LTD, North Street, Winkfield, Windsor, Berkshire SL4 4TH, the United Kingdom (applicant), represented by Bailey Walsh & Co LLP, 1 York Place, Leeds, West Yorkshire LS1 2DR, the United Kingdom (professional representative).


On 30/10/2015, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 295 544 is partially upheld, namely for the following contested goods:


Class 18: Leather and imitations of leather, and goods made from these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; articles of luggage, suitcases, briefcases, bags, handbags, shoulder bags, purses, wallets, shopping bags, suit carriers, attache cases, rucksacks, holdalls, organisers, pouches, inserts and parts and fittings for bags.


Class 25: Clothing, footwear, headgear.


2. Community trade mark application No 12 127 908 is rejected for all the above goods. It may proceed for the remaining goods.


3. Each party bears its own costs.



REASONS:


The opponent filed an opposition against some of the goods of Community trade mark application No 12 127 908, namely against all the goods in Classes 18 and 25. The opposition is based on Community trade mark registrations No 8 456 469, No 5 482 484 and No 364 257. The opponent invoked Article 8(1)(b) CTMR.


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


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.


Since all the earlier rights are for the figurative mark any reference to ‘earlier rights’ or ‘earlier (trade) marks’ in plural shall be understood in singular and vice versa, unless the text explicitly provides otherwise.




  1. The goods


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


1) Community trade mark No 8 456 469


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, parasols and walking sticks; whips, harness and saddlery.


Class 25: Clothing, footwear, headgear.


2) Community trade mark No 5 482 484


Class 25: Clothing, footwear and headgear.


3) Community trade mark No 364 257


Class 18: Luggage.


The contested goods are the following:


Class 18: Leather and imitations of leather, and goods made from these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery, articles of luggage, suitcases, briefcases, bags, handbags, shoulder bags, purses, wallets, shopping bags, suit carriers, attache cases, rucksacks, holdalls, organisers, pouches, inserts and parts and fittings for bags.


Class 25: Clothing, footwear, headgear.


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.


Contested goods in Class 18


Leather and imitations of leather, and goods made from these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery are listed in both specifications in exactly the same terms. The goods are identical.


The contested articles of luggage include, as a broader category, the opponent’s trunks and travelling bags. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot, ex officio, dissect the broader category of the applicant, the goods are considered to be identical.


The contested suitcases, briefcases, bags, handbags, shoulder bags, purses, wallets, suit carriers, attache cases, rucksacks, holdalls, organisers, pouches are included in or overlap with the broader category of the opponent’s goods made from leather and imitations of leather, not included in other classes, since the contested goods are often made of leather and imitations of leather. Therefore, these goods are identical.


The contested shopping bags and the opponent’s travelling bags serve the same purpose, in the broad sense of carrying items. They can coincide in their producer, distribution channels and end user. They are similar to a low degree.


The contested inserts and parts and fittings for bags are similar to a low degree to the opponent’s travelling bags. This is because parts and fittings are often produced and/or sold by the same undertaking that manufactures the final goods and target the same purchasing public. Depending on the goods concerned, the public may also expect the component to be produced by, or under the control of, the “original” manufacturer, which is a factor that suggests that the goods are similar to a certain degree.


Contested goods in Class 25


Clothing, footwear, headgear are listed in both specifications in exactly the same terms. The goods are identical.



  1. The signs




Earlier trade marks


Contested sign


The relevant territory is the European Union.


Visually, all the signs are figurative marks. They coincide in the representation of a polo player on a horseback, depicted in black and placed in the central position of the signs and the words ‘POLO CLUB’. In all the signs the horse is galloping and the polo player is wielding a mallet in his right hand. The marks differ in the details of the figurative elements – in the contested sign the polo player is facing left and holding his mallet upright, while in the earlier marks the polo player is facing right and holding his mallet ready to strike the ball. Furthermore, the signs differ in the verbal elements ‘BEVERLY HILLS’ of the earlier marks, written in upper case letters and forming an arch above the figurative element, and ‘Royal Berkshire’ of the contested sign, placed beneath the figurative element, as well as the overall stylisation of all the word elements of the signs.


Aurally, the pronunciation of the marks coincides in the verbal elements ‘POLO CLUB’ present identically in all of the signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the verbal elements ‘BEVERLY HILLS’ of the earlier marks and ‘Royal Berkshire’ present in the contested sign.


Conceptually, the signs have the device of a polo-playing rider in common. Both signs, therefore, refer to the concept of polo and, to this extent, they are conceptually similar. This concept is also conveyed by the words ‘POLO CLUB’, present in all signs, likely to be understood by the entire relevant public as referring to a place where polo is played. The words ‘BEVERLY HILLS’ of the earlier marks and Royal Berkshire’ of the contested sign will be recognised throughout the European Union as place name, either because the relevant consumer is aware of the place in question or because the consumer will suppose it to be a reference to the name of the polo club in question, and, thus, to the place where that club is situated.


Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.



  1. Distinctive and dominant elements of the signs


In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.


It is considered that the image of a polo player and the words ‘POLO CLUB’, present in all the signs, have:

  • low inherent distinctiveness for whips, harness and saddlery in Class 18, given their close connection to the playing of polo;

  • normal inherent distinctiveness for clothing, footwear, headgear in Class 25, given that they can be used for polo playing, although there is nothing in their description to the effect that they relate to goods specifically designed for that purpose;

  • inherent distinctiveness which is more enhanced, and at the very least normal, in relation to the remaining goods in Class 18, given that they have no connection with the playing of polo (see in this regard judgment of 26/03/2015, T-581/13, paragraph 49).


The earlier marks have no elements which could be considered more dominant (visually eye‑catching) than other elements.


In the contested mark, the words Royal Berkshire’, because of their smaller size and position at the bottom of the sign, have a lesser visual impact than the other two elements. Those two elements, namely the polo player device and the words ‘POLO CLUB,’ have an equal visual impact.



  1. 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.


According to the opponent the earlier trade marks enjoy a high degree of distinctiveness as result of their long standing and intensive use in the European Union in connection with all of the goods for which they are registered.


However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed for all of the opponent’s goods (see below in ‘Global assessment’).


With regards to the opponent’s 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, parasols and walking sticks of the earlier mark No 8 456 469, clothing, footwear, headgear of the earlier marks No 8 456 469 and No 5 482 484, as well as luggage of the earlier mark No 364 257, the assessment of the distinctiveness of the marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision and in the light of the judgment of 26/03/2015, T-581/13, paragraph 49, the earlier marks containing the image of a polo player and the words ‘POLO CLUB’ have inherent distinctiveness, which is normal for clothing, footwear, headgear in Class 25 and more enhanced, and at the very least normal, in relation to 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, parasols and walking sticks, as well as luggage in Class 18.


In relation to the remaining whips, harness and saddlery in Class 18 of the earlier mark No 8 456 469, the Opposition Division is of the view that the opponent’s claim regarding high degree of distinctiveness of the earlier mark must be considered. The Opposition Division assessed the evidence of enhanced distinctiveness and found that none of the pieces of evidence submitted directly or indirectly mentions or refers to the sale of goods in question. Therefore, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use for whips, harness and saddlery in Class 18.


Consequently, with regards to whips, harness and saddlery in Class 18 the assessment of the distinctiveness of the earlier mark No 8 456 469 will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision and in the light of the judgment of 26/03/2015, T-581/13, paragraph 49, since the earlier mark contains the image of a polo player and the words ‘POLO CLUB’, its inherent distinctiveness must be seen as low for whips, harness and saddlery in Class 18, given their close connection to the playing of polo.



  1. 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 and similar to various degrees are directed at the public at large. Taking into account the nature of the goods in question, the level of attention is average.



  1. Global assessment, other arguments and conclusion


The signs refer to the same concept of the game of polo. The conceptual similarity lies in the inclusion in the marks of a figurative element representing a polo player. According to the practice of the Opposition Division, a conceptual similarity resulting from the fact that two marks use images with an analogous semantic content may give rise to a likelihood of confusion only subject to the verification of other factors (particularly distinctive character, either per se or because of the reputation it enjoys with the public) (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’).


In the present case, the image of the polo player gives rise, in addition to the conceptual link, to significant visual similarities. The respective representations of this element are visually similar, far beyond the fact of including a polo player riding a horse. In the marks, the rider is in a similar position, namely wielding a mallet in his right hand, and the horse is galloping. The representations are in black and the graphical representation is very similar. The hardly perceptible, or at least not striking, differences lie in the details of these elements - in the contested sign the polo player is facing left and holding his mallet upright, while in the earlier marks the polo player is facing right and holding his mallet ready to strike the ball.


The representations of a polo player are in fact so much alike that it is considered that consumers, who only rarely have the chance to make a direct comparison between the different marks and must therefore place their trust in the imperfect picture of them that they have kept in their minds, may overlook the minor differences between the graphic devices.


In the earlier marks the image of a polo player is a co-dominant element accompanied by the words ‘BEVERLY HILLS’ and ‘POLO CLUB’. In the contested mark, the polo player device is one of the dominant elements and is represented above the words ‘Royal Berkshire’ and ‘POLO CLUB’. The words Royal Berkshire’ are written in smaller characters than the other elements and positioned beneath the figurative device of the contested sign. They have a limited visual impact compared to the other elements. The other words, ‘POLO CLUB’, have a normal distinctive character and a visual impact that is equivalent to that of the figurative element. They also reinforce the concept of the game of polo.


Considering that the similarities lie in the polo player representation which is the co-dominant element of the earlier marks, the Opposition Division acknowledges that the attention that consumers will pay to this element is of the utmost relevance in the present assessment.


In this respect, the earlier marks have been deemed to have an inherent distinctiveness which is normal for the goods in Class 25 and more enhanced, and at the very least normal, in relation to some of the goods in Class 18, namely 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, parasols and walking sticks and luggage.


According to case-law, in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the marks at issue are marketed. If the goods covered by the marks in question are usually sold in self-service stores where the consumers choose the good themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any aural similarity between the signs (judgment of 26/03/2015, T‑581/13, ‘Royal County of Berkshire POLO CLUB’, paragraph 80 and case-law cited therein).


The abovementioned goods in Classes 18 and 25, which are not directly related to polo playing, are usually sold in self-service stores where consumers choose the goods themselves. It must, therefore, be held that the visual aspect will be more important than the aural aspect. Consequently, the differences between the word elements of the signs at issue are not sufficient to preclude the likelihood of confusion.


It is concluded that since the marks share the device of a polo player, depicted in a similar manner, and the verbal element ‘POLO CLUB’, it is likely to induce the public to believe that all the contested goods which are identical or similar (to various degrees) to the opponent’s goods come from the same undertaking or economically linked undertakings. This is because the contested mark, despite the additional elements, will be perceived as a variant of the earlier marks.


On the other hand, with regard to the goods closely connected to the playing of polo, namely whips, harness and saddlery in Class 18, it must be held that the similarity between the signs at issue is reduced significantly by the fact that their common elements have low inherent distinctiveness in relation to those goods.


For the same reason, the earlier marks must be regarded as having a low inherent distinctiveness in relation to those goods. As it is, according to the case-law, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).


Moreover, it should be noted that whips, harness and saddlery are more likely to be purchased by the relevant public with the help of a specialised seller with whom the purchaser may speak, with the result that the aural similarity of the signs — which, in the present case, is relatively weak — will gain in importance.


As a result, the Opposition Division considers that the similarities between the signs are not sufficient to lead to a likelihood of confusion with respect to the abovementioned goods closely connected to the playing of polo.


In its observations of 21/10/2014, the applicant argues that it owns Community trade mark registration, which is the same as the present application, coexisting with the opponent’s earlier marks.


According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (judgment of 11/05/2005, T‑31/03, GRUPO SADA’, paragraph 86).


In this regard it should be noted that formal co‑existence on national or Community registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.


Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Community level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.


This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.


Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.


Furthermore, in its observations the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the words ‘POLO CLUB’ and/or the device of a horse rider. In support of its argument the applicant refers to several Community trade mark registrations.


The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the words ‘POLO CLUB’ and/or the device of a horse rider. Under these circumstances, the applicant’s claims must be set aside.


The applicant further argues that its CTM has reputation and filed various pieces of evidence to substantiate this claim.


The Opposition Division notes that the enhanced distinctiveness of the contested sign is irrelevant because likelihood of confusion requires a consideration of the scope of protection of the earlier mark rather than that of the mark applied for. If an earlier mark is recognized as having a broader scope of protection by reason of its enhanced distinctiveness, the reputation acquired by the mark applied for is as a matter of principle irrelevant for the purpose of assessing likelihood of confusion (judgment of 03/09/2009, C-498/07P, ‘La Española’, para. 84).


Finally, both parties refer in their observations to previous decisions of the Office to support their 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 practice 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 CTMR, and not to the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).


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


While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.


In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same. The Opposition Division finds that the judgment cited in the current decision and the principles referred therein are those that are applicable to the current dispute bearing in mind the particularities of the case.


Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registrations.


It follows from the above that the contested trade mark must be rejected for the following goods found to be identical or similar (to various degrees) to those of the earlier trade marks:


Class 18: Leather and imitations of leather, and goods made from these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; articles of luggage, suitcases, briefcases, bags, handbags, shoulder bags, purses, wallets, shopping bags, suit carriers, attache cases, rucksacks, holdalls, organisers, pouches, inserts and parts and fittings for bags.


Class 25: Clothing, footwear, headgear.


For the reasons explained above, the opposition is not successful for the following contested goods:


Class 18: Whips, harness and saddlery.



Since the opposition is successful with regards to the opponent’s 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, parasols and walking sticks of the earlier mark No 8 456 469, clothing, footwear, headgear of the earlier marks No 8 456 469 and No 5 482 484, as well as luggage of the earlier mark No 364 257 on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks in relation to those goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.



COSTS


According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.


Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.




The Opposition Division


Gordana TRIPKOVIĆ

Eamonn KELLY

Plamen IVANOV



According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

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