OPPOSITION No B 2 616 574

Estudio 2000, S.A., Avenida de Brasil, 17 – planta 13, 28020 Madrid, Spain (opponent), represented by Sonia Álvarez, Nuñez de Balboa, 31 – 3º 5ª, 28001 Madrid, Spain (professional representative)

a g a i n s t

Agapo Agnieszka Pogorzelska, ul. Drawska 10a m36, 02-202 Warszawa, Poland (applicant).

On 31/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 616 574 is partially upheld, namely for the following contested goods:

Class 18: Straps made of imitation leather; shoulder belts; boxes made of leather; boxes of leather or leather board; trimmings of leather for furniture; umbrellas and parasols; luggage, bags, wallets and other carriers.

2. European Union trade mark application No 14 497 507 is rejected for all the above goods. It may proceed for the uncontested goods in Classes 14 and 20, as well as for the remaining goods in Class 18 (i.e. girths of leather; saddlery, whips and animal apparel).

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 497 507, namely against all the goods in Class 18. The opposition is based on Spanish trade mark registration No 1 022 398. The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

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

The contested goods are the following:

Class 18: Straps made of imitation leather; girths of leather; shoulder belts; boxes made of leather; boxes of leather or leather board; trimmings of leather for furniture; umbrellas and parasols; luggage, bags, wallets and other carriers; saddlery, whips and animal apparel.

Umbrellas, parasols, saddlery and whips are identically contained in both lists of goods.

The contested straps made of imitation leather; girths of leather; boxes made of leather; boxes of leather or leather board; trimmings of leather for furniture are included in the broad category of the opponent’s goods made of these materials (leather and imitations of leather) not included in other classes. Therefore, they are identical.

The contested shoulder belts; bags, wallets; animal apparel, which can all be made out of different materials including leather and imitations of leather, overlap with the opponent’s goods made of these materials (leather and imitations of leather) not included in other classes. Therefore, they are identical.

The contested luggage and other carriers include, as a broader category, the opponent’s trunks and suitcases. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. 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 are directed at the public at large. Therefore, the degree of attention is average.

3. The signs

PONY	PogoPony
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 the word mark ‘PONY’.

The contested sign is the word mark ‘PogoPony’.

In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or in a combination of the two.

The earlier mark ‘PONY’ will be perceived as referring to a horse of a small breed by the relevant public, given the similarity with the equivalent Spanish word, ‘poni’.

The contested sign as a whole is meaningless. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, the relevant public will undoubtedly perceive the element ‘PONY’, which will be understood with the meaning given above for the earlier mark. The element ‘POGO’ in the contested sign will be perceived by the relevant public as meaningless and has, therefore, a normal degree of distinctiveness.

Taking the relevant goods into account, the element ‘PONY’, present in both marks, is weak for the opponent’s goods made of leather and imitations of leather not included in other classes, saddlery and whips and the contested girths of leather; saddlery, whips and animal apparel, as these are or may be riding goods and could be specially made or designed for ponies or pony riding. The public understands the meaning of the element ‘PONY’ and will not pay as much attention to this weak element as to the other, more distinctive, elements of the marks, namely ‘POGO’ in the contested sign. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. For the remaining goods in Class 18, the element ‘PONY’ will be perceived as an indicator of commercial origin. This is because, first, the goods in question are not normally made of pony skin or designed for ponies, second, it is not usual for the relevant goods to bear a specific indication of the material used and, third, pony skin is quite a rarely used type of leather. Therefore, in relation to the remaining goods in Class 18, the element ‘PONY’ has a normal degree of distinctiveness.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the element ‘PONY’, which is weak for some of the relevant goods and has a normal degree of distinctiveness for the others, and which forms the entire earlier mark and the second identifiable component of the contested sign. However, they differ in the first component of the contested sign, ‘POGO’.

Therefore, the signs are visually similar to a low degree for those goods for which the element ‘PONY’ is weak, as explained above, and will have a limited impact on consumers, and similar to an average degree for the remaining goods, for which the element ‘PONY’ has an average degree of distinctiveness.

Aurally, the pronunciation of the signs coincides in the syllables ‛PO‑NY’, which are weak for some of the relevant goods and have a normal degree of distinctiveness for the others, and which are present identically in both signs. The pronunciation differs in the syllables ‛PO‑GO’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to a low degree for those goods for which the element ‘PONY’ is weak, as explained above, and will have a limited impact on consumers, and similar to an average degree for the remaining goods, for which the element ‘PONY’ has an average degree of distinctiveness.

Conceptually, the signs have in common the English word ‘PONY’. As explained above, this word will be understood as the English equivalent of the Spanish word ‘poni’, meaning a horse of a small breed, and it is weak or of average distinctiveness depending on the specific type of goods in question. This word will undoubtedly be understood by the relevant public. Furthermore, although the English and Spanish words have different last letters (‘y’/‘I’), this difference will pass practically unnoticed by the relevant consumer, who will, ultimately, take the view that ‘PONY’ is a misspelling of the Spanish word; the different spelling will not in any event change the concept conveyed by the word ‘PONY’. As for the first component of the contested sign, contrary to the opponent’s argument, ‘POGO’ has no meaning in Spanish. Consequently, the signs are conceptually similar insofar as they both convey the semantic meaning of a horse of a small breed (see, by analogy, 18/06/2012, R 1126/2011-2, GRAN PREMIO PONY CLUB, § 33).

Therefore, the signs are conceptually similar to a low degree for those goods for which the element ‘PONY’ is weak, as explained above, and will have a limited impact on consumers, and similar to an average degree for the remaining goods, for which the element ‘PONY’ has an average degree of distinctiveness.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for some of the goods in question, namely goods made of leather and imitations of leather not included in other classes, saddlery and whips. The mark has a normal degree of distinctiveness for the remaining goods in relation to which it has no direct meaning from the perspective of the public in the relevant territory.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of 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). This is particularly relevant in the present case, where the goods are identical.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods are identical. The degree of attention of the relevant consumer is average.

The distinctiveness of the earlier mark must be seen as low for goods made of leather and imitations of leather not included in other classes, saddlery and whips and average for the opponent’s remaining goods.

The signs are visually, aurally and conceptually similar insofar as they coincide in the verbal element ‘PONY’, which forms the entire earlier mark. The signs differ in the first part of the contested sign, ‘POGO’, which is a meaningless element for the relevant public.

In relation to the contested straps made of imitation leather; shoulder belts; boxes made of leather; boxes of leather or leather board; trimmings of leather for furniture; umbrellas and parasols; luggage, bags, wallets and other carriers, the coinciding element ‘PONY’ has no direct meaning and, as explained above, its distinctiveness is normal. In relation to these goods, it is considered that the existence of the additional component ‘POGO’ in the contested sign is not sufficient to counteract the similarities between the signs. The fact that the marks coincide in the word ‘PONY’, which has a clear and direct conceptual meaning for the public and an average degree of distinctiveness in relation to the abovementioned goods, outweighs the presence of the meaningless element ‘POGO’ in the contested sign. It is, therefore, very plausible that the consumer might think that goods labelled with the contested sign and goods labelled with the earlier mark came from the same undertaking or from economically-linked undertakings.

However, in relation to the contested girths of leather; saddlery, whips and animal apparel, the coinciding element of the signs, ‘PONY’, is weak. According to the common practice, when marks have in common an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impressions of the marks. The assessment will take into account the similarities and differences between and the distinctiveness of the non-coinciding components. Furthermore, a coincidence in an element with a low degree of distinctiveness will not normally lead on its own to a likelihood of confusion. However, there may be likelihood of confusion if the other components have a lower (or equally low) degree of distinctiveness or an insignificant visual impact and the overall impressions of the marks are similar. In the present case, the other component of the contested sign, ‘POGO’, is placed at the beginning of the sign and has a normal degree of distinctiveness. Therefore, bearing in mind the foregoing, the additional element of the contested sign is sufficient to differentiate the signs. Therefore, no likelihood of confusion exists in relation to these goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public for some of the relevant goods and, therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 1 022 398. It follows from the above that the contested sign must be rejected for the following goods: straps made of imitation leather; shoulder belts; boxes made of leather; boxes of leather or leather board; trimmings of leather for furniture; umbrellas and parasols; luggage, bags, wallets and other carriers. The opposition is not successful insofar as girths of leather; saddlery, whips and animal apparel are concerned, for the above reasons.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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

Cecilie Leth BOCKHOFF

Marta GARCÍA COLLADO

Saida CRABBE

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.