DECISION

of the Second Board of Appeal

of 12 July 2016

In Case R 2554/2015-2

Royal County of Berkshire Polo Club Ltd
North Street Winkfield Windsor SL4 4TH United Kingdom	Applicant / Appellant

represented by Bailey Walsh & Co LLP, 1 York Place, Leeds LS1 2DR, West Yorkshire, United Kingdom

v

Lifestyle Equities C.V.
Prins Bernhardplein 200 1097 JB Amsterdam The Netherlands	Opponent / Respondent

represented by Dimitri Russo S.R.L., Via G. Bozzi, 47A, 70121 Bari, Italy

APPEAL relating to Opposition Proceedings No B 2 295 544 (European Union trade mark application No 12 127 908)

The Second Board of Appeal

composed of T. de las Heras (Chairperson), H. Salmi (Rapporteur) and C. Negro (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 10 September 2013, Royal County of Berkshire Polo Club Ltd (hereinafter ‘the applicant’) sought to register the figurative as amended

for, amongst others, the following list of 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; whips, harnesses and saddlery, articles of luggage, suitcases, briefcases, bags, handbags, shoulder bags, purses, wallets, shopping bags, suit carriers, attaché cases, rucksacks, holdalls, organisers, pouches, inserts and parts and fittings for bags;

Class 25 - Clothing, footwear, headgear.

2. The application was published on 28 October 2013.

3. On 8 January 2014, Lifestyle Equities C.V. (hereinafter ‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods, namely those mentioned at paragraph 1 above.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights:

• EUTM No 8 456 469 of the figurative mark

filed on 29 July 2009 and registered on 10 May 2010 for the following goods:

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.

• EUTM No 5 482 484 of the figurative mark

filed on 17 September 2004 and registered on 28 November 2006 for the following goods:

Class 25 - Clothing, footwear and headwear.

• EUTM No 364 257 of the figurative mark

filed on 15 October 1996 and registered on 27 November 1998 for the following goods:

Class 18 - Luggage.

6. By decision of 30 October 2015 (hereinafter ‘the contested decision’), the Opposition Division partially upheld the as amended. It gave, in particular, the following grounds for its decision:

Likelihood of confusion

• 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.

Comparison of the goods

• 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, attaché 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.

Comparison of the signs

• 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.

Distinctive and dominant elements of the signs

• 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.

• 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.

Distinctiveness of the earlier marks

• 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.

• 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. 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 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. 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.

Relevant public – degree of attention

• 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.

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).

• 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.

• 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.

• 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 October 2014, the applicant argues that it owns a EUTM 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 the Office concerning relative grounds of refusal, the applicant for the EUTM 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.

• In this regard it should be noted that formal co-existence on national or EU 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 EUTM 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 EUTM 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.

• 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 EUTMR, and not to the Office’s practice in earlier decisions.

• 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 EUTM 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, attaché 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.

7. On 22 December 2015, the applicant filed an appeal against the contested decision. The statement of grounds of the appeal was received on 17 February 2016.

8. In its observations in reply received on 22 April 2016, the opponent requests that the appeal be dismissed, the contested decision confirmed and the applicant bears the costs of the opposition and appeal proceedings.

Submissions and arguments of the parties

9. The applicant requests that the contested decision be set aside and seeks an award of its costs of the opposition and appeal proceedings. It argues that no detailed and/or sufficient reference is made in the contested decision to the parties’ evidence and submissions. It further elaborates on its view that the Opposition Division placed wholly unjustified and undue weight on the presence of a device of a polo player in both marks and in so doing gave no, or insufficient consideration to the utterly descriptive nature of the device element in both marks, when considered as a whole. The applicant alleges that no reasonable tribunal conducting itself fairly and appropriately could have denied the importance of the words ‘BEVERLY HILLS’ and ‘Royal Berkshire’ of the marks at issue. Furthermore, the applicant argues that the contested decision states that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question, but then there is no further guidance and indication that the behaviour of the average consumer may also vary according to the circumstances in which they are considered to be viewing or exposed to the marks.

10. The opponent agrees with the contested decision and elaborates upon its view that the public will see the marks at issue as variants of one another, representing the same polo player and horse in a different position, but maybe in a different location or presenting a different clothing line. The commercial origin of the identical goods under these marks will be related to the same or economically-linked undertakings.

Reasons

Preliminary remark

11. It is to be noted that the opposition was filed before the entering into force on 23 March 2016 of the new European Trade Mark Regulation which was introduced by Amending Regulation (EU) 2015/2424 for which the former Community Trade Mark Regulation (EC) No 207/2009 (throughout the decision referred to as ‘EUTMR’) is applicable to this appeal.

12. Furthermore, the Board will keep on referring to the current Community Trade Mark Implementation Regulation (EC) No 2868/95 (throughout the decision referred to as ‘CTMIR’) bearing in mind, though, that some Rules have been deleted by the said Amending Regulation.

Admissibility of the appeal

13. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

14. However, the appeal is not well-founded and the Board, bearing also in mind the circumstances in the case 26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, as well as that the applicant’s appeal before the Court of Justice was dismissed (14/01/2016, C‑278/15 P, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:C:2016:20), endorses the clear reasoning and outcome of the contested decision to the extent Article 8(1)(b) EUTMR was considered applicable by the Opposition Division.

Scope of appeal

15. The opponent did not file an appeal or a response seeking a decision annulling or altering the contested decision on a point not raised in the appeal.

16. Therefore, the scope of the appeal is limited to the rejection of the trade mark applied for in relation to the following 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, attaché cases, rucksacks, holdalls, organisers, pouches, inserts and parts and fittings for bags;

Class 25 - Clothing, footwear, headgear.

Likelihood of confusion

17. Article 8(1)(b) EUTMR determines:

1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods and services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

18. A likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

19. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22, 29.09.1998, C‑39/97, Canon, EU:C:1998:442, §16 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Relevant public / territory

20. In order to carry out a global assessment of the likelihood of confusion, the relevant territory and the relevant public therein has to be established.

21. As to the relevant territory, the earlier marks upon which the opposition is based are European Union marks. Therefore the relevant territory consists of the entire European Union.

22. The average consumer of the category of goods concerned is reasonably well informed and reasonably observant and circumspect. The average consumer’s level of attention is likely to vary according to the category of goods and services (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 29 and the case-law cited therein).

23. The goods at issue must — in the absence of further details concerning their possible status as luxury goods — be regarded as goods for everyday consumption and as directed at members of the general public, who are not expected to pay a particularly high degree of attention to them (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 34 and the case-law cited therein).

24. Therefore, the level of attention of the relevant public for the goods at issue is normal (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 35).

Comparison of the goods

25. Insofar as the opponent mentions that it agrees with the Opposition Division’s finding that all contested goods in Classes 18 and 25 are identical, this is a misreading of the contested decision. In the present case, the Opposition Division held that the goods covered by the marks at issue and falling within Classes 18 and 25 were identical or similar to varying degrees. The Board agrees with the reasoning and findings in this regard, which was not called into question by the applicant. In fact, before the Opposition Division, the applicant accepted that the class 18 and 25 goods at issue were the same or similar (see observations of 21 October 2014, page 1).

Comparison of the marks

26. The signs to be compared are:

    Contested mark	Earlier marks

27. The Board notes that the marks that were compared by the General Court in its judgment of 26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, were:

    Contested mark	Earlier marks

28. Therefore, the signs in the present case differ from those in the case before General Court only with respect to the words ‘Country of’, which are present in the latter case but absent in the former.

29. In this light, the Board sees no reason or justification to deviate otherwise from the comparison of the signs as made by the General Court in its judgment of 26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192.

Preliminary observations

30. The global assessment of the likelihood of confusion, as regards the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression produced by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 39 and the case-law cited therein).

31. The assessment of the similarity of two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of the mark that members of the relevant public retain, so that all the other components are negligible in the overall impression created by that mark (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 40 and the case-law cited therein)

32. Lastly, it should be borne in mind that the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 41 and the case-law cited therein).

The distinctiveness of the image of a polo player and the words ‘polo club’

33. Bearing in mind 26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 49) the image and the words have:

• Normal inherent distinctiveness in relation to the Class 25 goods at issue 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 other goods at issue given that they have no connection with the playing of polo.

The visual comparison

34. First, it follows from the examination of the signs at issue that the figurative element, representing a polo player in motion and wielding a mallet, and the words ‘polo club’ are elements common to the marks at issue (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 53).

35. It is true that, in the mark applied for, 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. However, those slight differences are not sufficient to reduce significantly the similarity deriving from the fact that both the signs at issue display the figure of a polo player astride a galloping horse. In both cases, the general public will recognise clearly and remember the image of a mounted polo player (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 54).

36. Furthermore, it should be noted that the images of the polo player occupy a central position in each of the signs at issue (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 55).

37. In the mark applied for, that figurative element appears above the two lines of text incorporating the word elements and is much larger than either line. Moreover, it should be noted that the expression ‘Royal Berkshire’ and the expression ‘Polo Club’ are each on a separate line, one below the other, and that their lettering is very different. In addition, the expression ‘Royal Berkshire’ is much more difficult to read than the expression ‘Polo Club’ and the relevant public would have to inspect it closely to be able to understand it; however, as follows from the above, it is not deemed likely to do so. Thus, those two expressions will not be perceived as a single word element which, taken as a whole, occupies a position of importance almost equal to that of the figurative element of the mark applied for (by analogy 26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 56).

38. As regards the earlier marks, it is admittedly true that their word elements occupy a position comparable to that of their figurative element in the structure of the sign at issue. However, the words ‘Beverly Hills’ and ‘Polo Club’ are not presented as a sequence of four words, but as two pairs, since the first two words form an arc above the polo player and the other two words are written in a straight line below the polo player. The fact that the polo player device is surrounded by word elements strengthens its central role within the earlier marks (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 57).

39. Therefore, bearing in mind the common and different features of the signs, there is some degree of visual similarity between the signs as a whole (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 59).

The aural comparison

40. Owing to the fact that both the signs at issue contain the words ‘polo club’, there are similarities in the pronunciation of those signs despite the differences brought about by the words ‘Beverly Hills’ and the words ‘Royal Berkshire’, the former to be found only in the earlier marks and the latter only in the mark applied for (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 63).

41. Since the word elements of the signs at issue partially coincide, it must be concluded that the aural similarity of those signs is relatively low (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 64).

The conceptual comparison

42. The signs at issue have a high degree of conceptual similarity, insofar as each refers to a polo club and displays a device of a polo player, and those devices are similar. Accordingly, either of those signs will bring the idea of polo to the minds of the relevant public (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 68).

43. Moreover, even if, notwithstanding the arrangement of the word elements of the signs at issue, the relevant public were to associate those word elements with two different polo clubs, the degree of similarity would be only marginally reduced insofar as both those signs would nevertheless continue to refer to the idea of polo playing, albeit at different clubs. Moreover, there is nothing to suggest that the non-English speaking public understands the meaning of the word element ‘Royal Berkshire’ in the mark applied for (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 69).

44. Finally, the Board notes that the applicant – when its refers to marks of football clubs which include a logo or image of a soccer player and the words ‘Football Club’ below the player as well as the geographical indication of the club – mentions that this analogy ‘…serves to illustrate in a graphical manner how absurd was the so-called reasoning adopted by the Opposition Division in effectively dismissing the effect and importance of the said geographical or regional indicia’ (see statement of grounds, point 11). However, it seems to have made a similar argument before the General Court to which the General Court replied as follows (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 70):

‘… it should be noted that the applicant’s argument based on the premiss that there is no likelihood of confusion between the marks of different football teams is wholly irrelevant. The applicant does not put forward any evidence at all as grounds for concluding that it is possible to compare the general public’s knowledge of polo with its knowledge of football; nor has the applicant explained how the two polo clubs concerned in this case would be comparable, in the eyes of that public, to football teams’.

45. There are no circumstances in the case at hand which would justify the Board to deviate from this consideration.

46. In light of the foregoing, it must be held that the signs at issue have significant conceptual similarity. It should be noted that the difference of the word ‘BEVERLY HILLS’ is taken into account; otherwise the signs would have been conceptually identical.

Conclusions regarding the similarity of the signs

47. It follows from all the considerations set out above that, in essence, the signs at issue have some visual similarity, relatively low aural similarity and significant conceptual similarity (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 72).

48. Those similarities derive from the elements of the signs at issue which bring polo playing to mind. It is apparent from the above (paragraph 33) that those elements have a normal or enhanced inherent distinctiveness in relation to the goods at issue (‘the goods not directly related to polo playing’) (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 73).

Global assessment

49. The overall assessment entails certain interdependence between the factors taken into account and, in particular, the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or 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; 22/06/1999 and C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

50. With regard to the goods not directly related to polo playing – that is all the goods that form part of the scope of appeal – the signs at issue are characterised by some visual similarity, a relatively low aural similarity and significant conceptual similarity.

51. 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 (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 80 and case law cited).

52. In the present case, most of the goods 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. Therefore, the differences between the word elements of the signs at issue – which, moreover, weaken the aural similarity between those signs, but without eliminating it – are not in any event sufficient to preclude the likelihood of confusion (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 81).

53. Moreover, the high conceptual similarity further strengthens the similarity of the signs.

54. The goods at issue are either identical or similar to a low degree.

55. With respect to the goods in Class 18, including the goods that are similar to a low degree, the earlier mark has an inherent distinctiveness which is more enhanced than with respect to the goods in Class 25.

56. Furthermore, the level of attention of the relevant public is normal.

57. In the light of all the foregoing, taking into account the relevant factors and their mutual interdependence, the Board considers that a significant part of the relevant public in the European Union may be misled into thinking that the contested goods bearing the contested mark and the goods bearing the earlier marks come from the same undertaking or, as the case may be, from undertakings that are economically linked.

58. In the light of all the foregoing, the applicant’s appeal is dismissed in its entirety.

Costs

59. Pursuant to Article 85(1) EUTMR, the applicant, as the losing party, must bear the costs of the appeal proceedings. Pursuant to Article 85(6) EUTMR and Rule 94(3) last sentence CTMIR, the applicant is therefore ordered to reimburse the costs of professional representation for the appeal proceedings at the level laid down in Rule 94(7)(d) CTMIR (EUR 550). As to the opposition proceedings, the Opposition Division ordered each party to bear their own costs. This remains unchanged.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the total amount of EUR 550 in respect of the costs of the opponent in the appeal proceedings.

According to Article 6 of Commission Regulation (EC) No 216/96 Signed R. Ocquet

According to Article 6 of Commission Regulation (EC) No 216/96 Signed R. Ocquet

According to Article 6 of Commission Regulation (EC) No 216/96 Signed R. Ocquet

Registrar: Signed H.Dijkema