OPPOSITION No B 2 771 155

Meta S.R.L., Via 2 Giugno, n. 126 Loc. Castelluccio, 52010 Capolona (Ar), Italy (opponent), represented by Luca Pierannunzio, Via Carlo Collodi n. 5, 06012 Città di Castello (Pg), Italy (professional representative)

a g a i n s t

Lonex Technology Co. LTD., No.57 Singfu E. Rd., Sinjhuang Dist., New Taipei City, Taiwan (applicant), represented by Florian Schwerbrock, Hagenauer Str. 1, 10435 Berlin, Germany (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 771 155 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 487 201, namely against all the goods in Classes 18 and 25. The opposition is based on Italian trade mark registration No 1 036 267. 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; 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; shoes; headwear.

The contested goods are the following:

Class 18: Suitcases; purses; animal carriers [bags]; small backpacks; bags; key bags; traveling bags; travel luggage; leather bags; schoolbags; backpacks; shoe bags for travel; portmanteaus; handbags; sports bags.

Class 25: Clothing; coats; sportswear; tee-shirts; leisurewear; jackets [clothing]; shoes; scarfs; headbands; caps [headwear]; hosiery; gloves [clothing].

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

Travelling bags are identically contained in both lists of goods.

The contested travel luggage; bags include, as broader categories, the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested suitcases; small backpacks; leather bags; backpacks; shoe bags for travel; portmanteaus are included in, or overlap with, the opponent’s broad category travelling bags. Therefore, they are identical.

The contested purses; key bags; schoolbags; handbags; sports bags are similar to the opponent’s travelling bags as they coincide in purpose, intended public and channels of distribution. Moreover, the contested schoolbags; handbags; sports bags are in competition with the opponent’s travelling bags.

The contested animal carriers [bags] are special containers or bags used to transport small animals. They have some points in common with the opponent’s travelling bags in their nature and purpose, since they are various types of containers for carrying and keeping things. Although they are usually distributed through different channels, they may also coincide in their manufacturers and end users. Therefore, they are considered similar to a low degree.

Contested goods in Class 25

Clothing and shoes are identically contained in both lists of goods. Moreover, the contested coats; sportswear; tee-shirts; leisurewear; jackets [clothing]; scarfs; headbands; caps [headwear]; hosiery; gloves [clothing] are included in one of the opponent’s broader categories clothing or headwear. Therefore, they are identical.

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 and similar to different extents are directed at the public at large with an average degree of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 sign contains the word element ‘ASCOT SPORT’ and underneath, the representation of a horse’s head within a laurel wreath framed in an unfinished square. The contested sign consists of the representation of a horse’s head and the word element ‘LONEX’ below.

In relation to the goods in question, the word ‘SPORT’ of the earlier sign will be perceived by the Italian-speaking public as referring to something ‘suitable for outdoor or informal wear’, and therefore, it is a weak term.

On the other hand, the word ‘ASCOT’ of the earlier sign may be perceived by the relevant public as referring to a famous British racecourse. This meaning is reinforced by the representation of a horse’s head within a laurel wreath. However, these elements have a normal inherent distinctiveness in relation to goods in Classes 18 and 25, given that even if they can be used for horse riding, there is nothing in their description to the effect that they relate to goods specifically designed for that purpose (26/0372015, Polo Club, T-581/13, ECLI:EU:T:2015:192, § 49). The same is applicable for the figurative element in the form of a horse’s head in the contested sign.

The word ‘LONEX’ in the contested sign lacks meaning for the relevant public and therefore, it has a normal degree of distinctiveness. The contested sign has no elements that could be considered clearly more distinctive than other elements.

The opponent argues that in the earlier mark, the figure of a stylised horse’s head is more easily perceivable than the rest of the word elements included in the sign. However, the Opposition Division considers that due to the position and size of the letters of the word element ‘ASCOT SPORT’, this element will be equally easily perceivable as the figurative element. Therefore, the signs have no elements that could be considered clearly more dominant than other elements.

Visually, both signs contain the representation of a horse’s head in black, however it presents slight differences as in the muzzle, ears and throat. The signs further differ in the remaining figurative elements of the earlier sign and in the word elements of each sign.

In the present case, it is pivotal to consider that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).Therefore, the signs are visually similar to an average degree.

Considering the above, the signs are similar only to a low degree.

The signs are not aurally similar as they do not coincide in any element.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs include the representation of a horse’s head, they will be associated with a similar meaning. However, since the remaining word and figurative elements of the earlier sign convey other meanings which are not present in the contested sign, the signs under comparison harbour conceptual differences and are, consequently only conceptually similar to a low degree.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and/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).

As concluded above, the contested goods are identical and similar to the opponent’s goods and they target the public at large with an average degree of attention.

In the present case, the tenuous similarity of the signs, only similar to a low degree visually and conceptually, and aurally clearly not similar, cannot be offset by the identity or similarity of the goods. Consequently, the Opposition Division considers that the differences between the signs are sufficiently striking and will allow the relevant public to safely distinguish the signs, thus avoiding any likelihood of confusion, including the likelihood of association.

Consequently, it can be concluded that, despite the inclusion in both marks of a similar representation of a horse’s head, the differences between them are sufficiently striking and will allow the relevant public to avoid likelihood of confusion, including the likelihood of association, even taking into account their average degree of attention and identity and similarity of the goods.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Fabián GARCIA QUINTO

Ana María MUÑIZ RODRIGUEZ

Loreto URRACA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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