OPPOSITION No B 2 923 434

Jaguar Land Rover Limited, Abbey Road, Whitley, Coventry, CV3 4LF, United Kingdom (opponent), represented by Reddie & Grose LLP, The White Chapel Building, 10 Whitechapel High Street, London, E1 8QS, United Kingdom (professional representative)

a g a i n s t

Goja Holding, Benzstr. 8, 70839, Gerlingen, Germany (applicant).

On 30/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 434 is rejected in its entirety.

2. The opponent bears the costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 569 808 for the word mark ‘JAGZILLA’, namely against all the goods and services in Classes 28 and 35. The opposition is based on the following earlier marks, in relation to which the opponent invoked Article 8(1)(b) EUTMR:

1. United Kingdom trade mark registration No 1 337 077 for the word mark ‘JAGUAR’ for goods in Class 28;

2. European Union trade mark registration No 14 398 127 for the word mark ‘JAG’ for goods in Classes 9 and 12;

3. United Kingdom trade mark registration No 3 218 193 for the word mark ‘JAG’ for services in Class 35;

4. United Kingdom trade mark registration No 3 061 059 for the word mark ‘JAG’ for goods in Class 12;

5. European Union trade mark registration No 16 492 332 for the word mark ‘JAGUAR’ for goods in Classes 25 and 28;

6. European Union trade mark registration No 26 625 for the word mark ‘JAGUAR’ for goods in Class 12.

In addition, the opponent also invoked Article 8(5) EUTMR in relation to earlier mark 6).

SUBSTANTIATION

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any substantiation evidence as regards some of the earlier trade marks on which the opposition is based.

On 13/07/2017, the opponent was given two months, commencing after the ending of the cooling-off period, namely until 25/11/2017, to submit the abovementioned material. This time limit was subsequently extended at the opponent’s request and finally expired on 25/01/2018.

On 17/01/2018, the opponent submitted its observations, in which it added an extract from the UKIPO regarding the substantiation of UK trade mark registration No 3 218 193 for the word mark ‘JAG’ (Attachment 1). However, for reasons of procedural economy, the opponent decided not to substantiate the remaining UK marks on which the opposition was based, namely United Kingdom trade mark registration No 1 337 077 for the word mark ‘JAGUAR’ and United Kingdom trade mark registration No 3 061 059 for the word mark ‘JAG’.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on UK trade mark registrations No 1 337 077 and No 3 061 059. Therefore, the opposition will proceed on the basis of the remaining EUTM earlier rights and the UK mark for which evidence of substantiation has been presented within the relevant time period.

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.

PART I. DISTINCTIVENESS OF THE SIGNS ‘JAG’ AND ‘JAGUAR’

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion. The Opposition Division considers that in the present case the assessment of such distinctiveness has to be carried out at this stage of the decision, as it has an effect on the further findings regarding the likelihood of confusion.

According to the opponent, the signs ‘JAGUAR’ (covered by EUTM No 26 625) and ‘JAG’ (covered by EUTM No 14 398 127) enjoy a high degree of recognition among the relevant public in the EU, in particular in the United Kingdom, in connection with motor land vehicles and parts and fittings therefor in Class 12. The opponent claims that it is ‘a globally renowned manufacturer of automobiles based in the UK. The JAGUAR brand was founded in 1934, and was designed as a luxury vehicle.’ Furthermore, the opponent claims that, as a result of ‘the longstanding fame and success of the JAGUAR vehicle, it has acquired a nickname, “JAG”. The JAGUAR vehicle has commonly been known by its nickname, amongst JAGUAR owners, the press, enthusiasts, supporter clubs and the general public for more than 40 years.’

These claims must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence to prove its claims:

Attachment 2: Wikipedia extracts providing details of the history of the JAGUAR vehicles, produced by ‘JAGUAR Cars’ since 1935 (note that the company has been merged into the current opponent). The Wikipedia extracts contain over 70 references to external sources, provided together with their dates of publishing and respective URL addresses or references to printed editions. Even though the content of the articles has not been separately submitted by the opponent, some information may be deduced from the articles’ headlines.

Attachment 3: a sample of articles published by independent media with references to JAGUAR vehicles, in particular referred to by the nickname ‘JAG’. In particular:

- ‘Jaguar unveils new £35k crossover 4x4 F-Pace – as it hopes to score a hit with “Jag Dads” and deliver its biggest seller’, published on 04/09/2015 on www.thisismoney.co.uk. Reference in the article is made to the sales of Jaguar cars per year as exceeding 200 000.

- ‘Jaguar’s new XJ: news, photos, video of 2010 Jag XJ’, published in 2010 in CAR Magazine, www.carmagazine.co.uk (‘the new Jag is essentially reworked version of today’s outgoing XJ’, ‘so the new Jag’s a lightweight’, ‘the new Jag is based on the old car’, etc.).

- ‘Why the Jaguar I-Pace needs to drive like a Jag, The Jaguar F-Pace triumphed with its dynamic driving style; the I-Pace needs to follow suit’, published on 15/11/2016 in Autocar, www.autocar.co.uk.

- ‘Jaguar F-Pace, car review: SUV looks a brilliant addition to Jag’s range’, published on 27/01/2016 in The Independent.

- ‘My favourite Jag so far’, forum debate dated 2006, www.jec.org.uk/forums, containing opinions of members of the public.

- ‘The 10 most important Jaguars ever made’, published on 14/06/2017 in The Telegraph, containing the following reference: ‘To celebrate the new launch, we’ve put together a list of our favourite Jags. It’s a legendary brand that exemplifies some of the best (and worst) of British carmaking values. Read on for some of the company’s highlights.’

- ‘Winning Pace race, New SUV should give Jag the sales and cash to develop a sports car’, published on 05/01/2018.

- ‘Jaguar E-Pace: the amazing new £28,500 baby Jag SUV’, published on 13/07/2017 in Motoring Research, www.motoringresearch.com.

Attachment 4: an extract from Collins English Dictionary, containing the entry ‘JAG’ as a word with various meanings in English. As the opponent notes, the following result also appears under the word ‘JAG’ – informal, ‘a Jaguar car: often understood as a symbol of affluence’. This is accompanied by sentences in which the word ‘Jag’ is used in relation to the particular car brand.

Attachment 5: an extract from Wikipedia referring to the verbal element ‘-zilla’ as ‘an English slang suffix, a back-formation derived from the English name of the Japanese movie monster Godzilla. It is popular for the names of software and websites. It is also found often in popular culture to imply some form of excess, denoting the monster-like qualities of Godzilla.’ The extract bears references to the diversified use of the element ‘-zilla’ for businesses and products, entertainment, etc.

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks ‘JAGUAR’ and ‘JAG’ have acquired a high degree of distinctiveness through their use in relation to cars in Class 12 in a substantial part of the EU market, in particular in the UK market.

This has been attested by the various sources submitted by the opponent, in particular references to the brand ‘JAGUAR’ in independent media with coverage in the UK. Furthermore, as demonstrated by the opponent by means of the documents above, the opponent’s car brand is, indeed, often referred to as ‘JAG’ and this word has also entered English dictionaries in relation to the opponent’s vehicle brand. Consequently, the Opposition Division will take into account these findings to the extent that they are relevant for the assessment of likelihood of confusion.

Nevertheless, as will be discussed below, the claim and proof of enhanced distinctiveness of the marks in relation to cars in Class 12 remains irrelevant for the assessment of the likelihood of confusion in the present case, since these goods covered by the earlier marks, namely the goods in Class 12, are dissimilar to the contested goods and services in Classes 28 and 35. Furthermore, the enhanced distinctiveness of the earlier marks cannot overcome this dissimilarity under Article 8(1)(b) EUTMR, since this ground is limited to the examination of goods and services that exhibit at least a certain degree of similarity.

Regarding the remaining relevant goods and services, the earlier signs do not convey any meaning that would describe them or allude to their characteristics; consequently, the signs ‘JAG’ and ‘JAGUAR’ have an average degree of distinctiveness in relation to the goods and services in Classes 9 and 35 of UK trade mark No 3 218 193 and the goods in Class 28 of EUTM No 16 492 332 that are relevant in the comparison of the goods and services, as will be demonstrated in the next sections.

PART II. EARLIER TRADE MARKS ‘JAG’

1. The goods and services

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

EUTM No 14 398 127

Class 9: Sunglasses; protective clothing; racing driver protective clothing; protective helmets; parts and fittings for any of the aforesaid goods.

Class 12: Motor land vehicles; bicycles; non-motorised scooters; parts, fittings and accessories for bicycles or scooters.

UK trade mark No 3 218 193

Class 35: Business consultancy services and business management advisory services, relating to the manufacture, provision, distribution, sale, maintenance, restoration and repair of motor vehicles, export and import of vehicles, their parts and fittings; organisation of promotional goods programmes; consultancy services relating to organisation of promotional goods programmes; distributorship services and retail store services relating to motor land vehicles and parts, fittings and accessories for motor land vehicles; promoting the sale of goods and services of others in the automotive industry by dissemination of promotional materials and product information through an online global computer network, through the distribution of printed material, audio and video recordings, television and radio recordings, online advertising, internet web-sites and promotional contests; retail store services in the field of automobiles, automobile parts, fittings and accessories; automobile dealerships; organization, operation and supervision of loyalty and incentive schemes; customer loyalty services and customer club services, for commercial, promotional and advertising purposes; membership club services providing discounts; retail services in the field of clothing, footwear, headgear, luggage, toys, jewellery, jewellery boxes, chorological and chronometric articles, pedometers, watches, leather goods, luggage, bags, wallets, purses, belts, stationery, prints, pictures, posters, postcards, greeting cards, playing cards, artwork, key rings, umbrellas, sports equipment, printed matter, books, stationery, DVDs, CDs, sound recordings, video recordings, video games, interactive and digital entertainment, apps for mobile phones, bicycles, bicycle parts and accessories, fragrance, perfumery, cleaning and polishing preparations, eyewear and cases, chargers, holders and accessories for computers, tablet computers or mobile phones, flashlights, torches, smoking articles, textile and textile goods, homewares, crockery, cutlery, tableware, knives, glassware, drinking bottles, coolers, humidors, lanyards, furniture, plastic goods, mineral and aerated water and other non-alcoholic drinks; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; advertising and promotional services; production of advertising materials; business marketing services; publicity and sales promotion services; providing information about automobiles for sale by means of the Internet; providing a database of information in the field of automotive maintenance and repair; providing consumer information services and making referrals in the field of entertainment services for products, services, events, activities, facilities and locations; information and advisory services relating to all of the aforegoing.

The contested goods and services are the following:

Class 28: Sports equipment; sports training apparatus; benches for sporting use; sporting articles and equipment; body training apparatus [exercise]; fitness exercise machines; indoor fitness apparatus; weight lifting benches; machines incorporating weights for use in physical exercise; dumb-bells [for weight lifting]; dumb-bell shafts [for weight lifting]; dumbbell shafts for weight lifting.

Class 35: Business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services; provision of an on-line marketplace for buyers and sellers of goods and services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 28

The contested sports equipment; sporting articles and equipment, as well as the contested sports training apparatus; benches for sporting use; body training apparatus [exercise]; fitness exercise machines; indoor fitness apparatus; weight lifting benches; machines incorporating weights for use in physical exercise; dumb-bells [for weight lifting]; dumb-bell shafts [for weight lifting]; dumbbell shafts for weight lifting are various articles and apparatus used for sports. They are considered similar to a low degree to the opponent’s protective clothing and protective helmets in Class 9. These goods may have the same producers, relevant public and distribution channels.

Contested services in Class 35

The contested business assistance, management and administrative services; business analysis, research and information services include, or overlap with, the opponent’s business consultancy services and business management advisory services, relating to the manufacture, provision, distribution, sale, maintenance, restoration and repair of motor vehicles, export and import of vehicles, their parts and fittings. Since the Opposition Division cannot artificially dissect the contested services from the opponent’s services in the same class, they are considered identical.

Advertising and promotional services are identically contained in both lists of services.

The contested marketing overlaps with the opponent’s business marketing services. They are identical.

The contested provision of an on-line marketplace for buyers and sellers of goods and services overlap with the opponent’s distributorship services and retail store services relating to motor land vehicles and parts, fittings and accessories for motor land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested services from the opponent’s services, they are considered identical.

The Opposition Division finds it necessary to tackle in the comparison the goods in Class 12 for which earlier EUTM No 14 398 127 is registered, since the earlier mark is considered to have enhanced distinctiveness for some of these goods, namely cars. Account is first taken of the fact that the opponent’s vehicles, including bicycles and scooters, and parts thereof, have nothing in common commercially with the goods in Class 28 for which the applicant seeks protection. These goods are generally produced by different manufacturers, namely car manufacturers versus producers of sports equipment and articles; they target different consumers and are available through different distribution channels, in principle car salons, car dealers and car showrooms versus sports stores and outlets. In addition, these goods are not complementary to each other and cannot be in competition, since they have different purposes, namely transport versus physical training and exercise. Therefore, the contested goods in Class 28 are considered dissimilar to the opponent’s goods in Class 12.

Regarding the contested services in Class 35, goods and services are generally different in their nature. While the goods are tangible assets, the services are not. Even though in some cases a certain degree of similarity between goods and services may be justified on the basis of some complementarity, this does not come into play in the present comparison. The contested services in Class 35 are professional business services that target specialists in the respective commercial fields. It is obvious that these services differ in their providers, target customers and distribution channels from those of the opponent’s goods in Class 12. In addition, even though some of the contested services may concern the advertising and promotion of goods in Class 12, this is still not sufficient to find similarity between the conflicting goods and services. They remain dissimilar.

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 and services found to be identical or similar to a low degree are directed at the public at large, as well as at business customers with specific professional knowledge or expertise to the extent that professional business services in Class 35 are concerned.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

JAG	JAGZILLA
Earlier trade marks	Contested sign

The relevant territory is the EU and the United Kingdom.

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 marks, ‘JAG’, may be associated by some EU consumers, in particular by English speakers, with a common abbreviation used to designate a Jaguar car. However, it is not obvious to the Opposition Division that consumers who associate this verbal element with a car brand will perceive the same connotation when the mark is featured on other products and services, which are not cars or not related to cars. Bearing in mind that there are no arguments that would prove otherwise, the Opposition Division considers that, the word ‘JAG’ will remain meaningless, and also distinctive, in relation to the goods and services that are relevant based on the comparison above, namely the opponent’s goods and services in Classes 9 and 35.

The contested sign, ‘JAGZILLA’, will be generally perceived as a fanciful word. As the opponent puts forward in its observations, the ‘-zilla’ at the end of the sign may convey a clear allusion to ‘Godzilla’, a fictional monster (originating from Japan) often described as ‘King of the Monsters’, thus implying its outrageous size and power. Taking into account that consumers tend to break down verbal elements into parts, when a meaning is suggested by them, it cannot be ruled out that some consumers may perceive the entire verbal element ‘JAGZILLA’ as a made-up word combining the concepts of ‘Godzilla’ and the features of another living creature such as a jaguar (an animal from the family of wild cats). Bearing in mind these possible perceptions on the part of some consumers, the entire fanciful verbal element will be perceived as alluding to a monstrous creature having some characteristics of a jaguar.

It cannot be disregarded that some EU consumers may perceive no concepts at all in the made-up word ‘JAGZILLA’ and see it as entirely meaningless. The further comparison will, however, focus on consumers who see concepts in this verbal element and split it into parts, since this is considered the best-case scenario for the opponent.

For the sake of completeness, it has to be added that, in addition to the above, the word ‘JAG’ on its own may be understood as the pronoun ‘I’ or ‘me’ by Swedish-speaking consumers or with other connotations such as ‘a period of uncontrolled activity’ (Collins Dictionary Online) or ‘a sharp projection’ (Oxford Dictionary Online) by English speakers; still, even in such cases, the word remains distinctive in relation to the goods and services. However, this scenario is also considered irrelevant in the present case, as it will only add to the conceptual differences between the signs and make confusion between them less likely.

The signs are word marks, with no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the sequence of letters JAG’ constituting the earlier marks in their entirety and the beginning of the contested sign. However, they differ in the remaining letters, ‘ZILLA’, in the contested sign, which have no counterpart in the earlier marks. Account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Nevertheless, the length of the signs may also influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Given these considerations, in particular in view of the short length of the earlier marks, namely three letters versus eight letters in the contested sign, the signs in the present case are at most visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As commented above, although a part of the public in the relevant territory will perceive the meaning of the contested sign as explained above, considering the nature of the goods and services in question, the earlier marks will convey no concept for the EU public. Since one of the signs will not be associated with any meaning, the signs are conceptually not similar.

In addition, even if the earlier marks are associated with cars, this meaning will not be perceived in the contested sign, which retains the concept of a monstrous creature; therefore, in that case the signs are conceptually dissimilar.

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

4. Global assessment, other arguments and conclusion

The goods and services are identical (Class 35) and similar to a low degree (Class 28). The degree of attention may vary depending on the natures and characteristics of these goods and services, as already referred to above. The earlier marks, ‘JAG’, enjoy an average degree of distinctiveness in relation to the goods and services relevant to the comparison.

The signs are visually and aurally similar to a low degree and conceptually not similar or dissimilar. As explained above, the earlier marks consist of only three letters, whereas the contested sign incorporates an additional, larger, verbal element. Even though the earlier marks, ‘JAG’, are entirely reproduced at the beginning of the contested sign, the length of the earlier marks has to be considered a relevant factor that might prevail when evaluating the likelihood of confusion between the conflicting signs.

Furthermore, the different verbal part, ‘ZILLA’, in the contested sign is clearly perceptible and, moreover, it will contribute an additional connotation and serve to convey a completely different global meaning in the contested sign, namely it alludes to a monster, which may also be associated with a jaguar, whereas the earlier marks bear no meaning when featured on the conflicting goods and services in Classes 9 and 35. The differences between the signs, as seen above, are, in the opinion of the Opposition Division, sufficient to exclude any likelihood of confusion in this case. Furthermore, this finding also applies to the remaining parts of the public, which may see no meaning in the contested sign at all or will perceive the earlier signs with a different meaning (in the case of the Swedish- and English-speaking consumers); no likelihood of confusion exists with respect to these consumers either.

In addition, account must be taken of the fact that the assessment of likelihood of confusion necessarily implies some considerations of the market reality. As clarified above, the word ‘JAG’ will be seen as meaningful and conveying a particular concept, insofar as it refers to a car brand, for which the sign has acquired distinctiveness through use on the market (as already established in Part I). The identical services in Class 35 are meant for business professionals, who are usually more attentive and observant due to the impact that marketing and financial decisions may have on their businesses. Nevertheless, the impact produced by the recognition of the opponent’s marks is restricted to the car manufacturing business and cannot be deemed to have any relation to goods and services for which no similarity has been established in the comparison of the goods and services above. Furthermore, even bearing in mind the principle of interdependence, such confusion may be safely excluded even with respect to the goods in Class 28, similar to a low degree to the opponent’s goods/services.

Considering all the above, even considering the identity between the services, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected with respect to the earlier marks, ‘JAG’.

PART III. EARLIER TRADE MARKS ‘JAGUAR’

5. The goods and services

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

EUTM No 16 492 332

Class 25: Clothing, footwear, headgear; outerwear; leisurewear; T-shirts, tops, polo shirts, sweatshirts, hooded tops, hooded pullovers, shirts, fleece pullovers, fleece jackets, sweaters; suits, coats, dresses, skirts, jackets, vests, blazers, anoraks; sweatpants, trousers, shorts; overalls, coveralls, uniforms, smocks; underclothing, pajamas, sleep masks, pocket squares, swimwear, bathing suits, bathing trunks; scarves, bandanas, sashes for wear; hosiery, socks, stockings; cloth bibs; costumes; fancy dress costumes; aprons; belts; gloves, mittens, driving gloves; ties; headgear, hats, caps, head scarves, head wraps, headbands, visors, ear muffs, knitted beanies; footwear, shoes, boots, slippers, drivers shoes, sandals; children’s clothes; babies clothes; sports teams club shirts; sports teams scarves; sports teams training kit; sports teams replica kit; sports teams supporters clothing, headgear and footwear.

Class 28: Toys, games, and playthings; scale models and toy models, all of motor land vehicles, all sold complete or in kit form; go karts [toys]; remote control toy vehicles; rideable toy vehicles; ride-on toy vehicles; computer controlled toys; computer controlled toy-vehicles; computer controlled scale model vehicles; sports equipment; sailing equipment [sporting articles]; horse riding equipment [sporting articles]; rugby balls and equipment for playing rugby; golf clubs, golf balls and golf bags; golf divot repair kit; gymnastic and sporting articles not included in other classes.

EUTM No 26 625

Class 12: Motor land vehicles and parts and fittings therefor.

The contested goods and services are the following:

Class 28: Sports equipment; sports training apparatus; benches for sporting use; sporting articles and equipment; body training apparatus [exercise]; fitness exercise machines; indoor fitness apparatus; weight lifting benches; machines incorporating weights for use in physical exercise; dumb-bells [for weight lifting]; dumb-bell shafts [for weight lifting]; dumbbell shafts for weight lifting.

Class 35: Business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services; provision of an on-line marketplace for buyers and sellers of goods and services.

Contested goods in Class 28

The contested sports equipment and sporting articles and equipment are identically contained in both lists of goods, including synonyms.

The contested sports training apparatus; benches for sporting use; body training apparatus [exercise]; fitness exercise machines; indoor fitness apparatus; weight lifting benches; machines incorporating weights for use in physical exercise; dumb-bells [for weight lifting]; dumb-bell shafts [for weight lifting]; dumbbell shafts for weight lifting are various articles and apparatus used for sports. These are included in, or overlap with, the opponent’s sporting articles and equipment in Class 28. They are identical.

For the sake of completeness, as already referred to in the previous section, the contested goods are obviously dissimilar to the opponent’s goods in Class 12.

Contested services in Class 35

The contested services in Class 35 are considered dissimilar to any of the opponent’s goods in Classes 12, 25 and 28. In principle, goods and services have different natures, as goods are tangible assets and services are intangible. Furthermore, they also have different manufacturers or providers; they do not have the same relevant publics or distribution channels. Even though a certain degree of similarity may be justified in cases where the goods are complementary to the services, this is not the case here. The goods and services in question do not have anything in common and such similarity cannot be established.

6. Relevant public — degree of attention

The goods found to be identical are directed at the public at large. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods purchased.

7. The signs

JAGUAR	JAGZILLA
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Reference is made to the conclusions in Part II in relation to the contested sign.

The word ‘JAGUAR’ will be understood throughout the EU, due to the identical or very close equivalents (as regards its meaning in English), as a reference to a large wild animal of the cat family with dark spots on its back. Since the word bears no descriptive or allusive connotations in relation to the goods in question, it is considered distinctive.

The signs are word marks with no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the sequence of letters ‘JAG’, constituting the beginning of the contested sign and of the earlier marks. However, they differ in the remaining letters, ‘ZILLA’ in the contested sign and ‘UAR’ in the earlier marks. Even though consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, it has to be also taken into account that they perceive the sign as a whole and do not proceed to analyse its various details. Furthermore, in the present case the public will not tend to break down the earlier sign but will perceive it as a whole from visual and aural points of view, since it already constitutes a conceptual unit. Bearing in mind the different endings of the signs, they are considered visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, in particular a wild cat in the earlier marks versus a monstrous creature, which might to a certain extent resemble a jaguar or have features in common with it, in the contested sign, the signs are considered conceptually dissimilar.

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

8. Global assessment, other arguments and conclusion

The goods and services are partly identical (contested Class 28) and partly dissimilar (contested Class 35). The degree of attention may vary depending on the different natures and characteristics of these goods and services, as already referred to above. The earlier sign, ‘JAGUAR’, enjoys an average degree of distinctiveness in relation to the goods compared above, namely the goods in Class 28.

The signs are visually and aurally similar to a low degree and they are conceptually dissimilar. As explained above, the earlier marks form a conceptual unit, namely a reference to the existing word ‘jaguar’. Furthermore, the contested sign, albeit containing a mere reference to a jaguar (for some of the consumers), will not be perceived as a combination of its two elements in isolation but, instead, will be grasped in its entirety, namely as a made-up word generally referring to a monstrous creature. This conceptual contrast, together with the different visual and aural overall impressions conveyed by the signs, will be sufficient to help consumers safely distinguish between the conflicting marks even when they are featured on identical products in Class 28.

As already discussed above, the trade mark ‘JAGUAR’ (EUTM No 26 625) enjoys enhanced distinctiveness and, consequently, enhanced protection with respect to vehicles, in particular cars in Class 12. Nevertheless, the impact produced by the recognition of this mark of the opponent is restricted to the car manufacturing business and cannot be deemed to have any relation to goods and services for which no similarity has been established in the comparison of the goods and services above.

Considering all the above, even taking into account the identity between the goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be also be rejected with respect to the earlier marks, ‘JAGUAR’.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent also claimed that its earlier EUTM No 26 625 for the word ‘JAGUAR’ enjoys a reputation in the EU for the goods in Class 12 for which it has been registered.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar and consumers will associate the conflicting trade marks because of these similarities, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events. Given the manifestly different market sectors to which the opponent’s goods (Class 12) and the contested goods and services (Classes 28 and 35) belong, such arguments and evidence were particularly necessary to illustrate how the opponent would suffer an injury caused by the launching of the contested mark on to the relevant market. The Opposition Division cannot foresee such a risk prima facie and cannot proceed to investigate the matter ex officio.

This is confirmed by Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (formerly Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ewelina SLIWINSKA

Manuela RUSEVA

Gueorgui IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.