OPPOSITION No B 3 063 931

Manuel Jacinto, Lda, Rua da Igreja, n  352, 4535-446 S.Paio de Oleiros, Portugal (opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º,1069-229 Lisbon, Portugal (professional representative)

a g a i n s t

Apassionata World GmbH, Kantstraße 24, 10623 Berlin, Germany (applicant), represented by Schlarmann Ahlberg Partnerschaftsgesellschaft mbB, Neuer Wall 40, 20354 Hamburg, Germany (professional representative).

On 15/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 931 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 17 867 317, ‘Cavalluna’ (word mark), namely against some of the goods in Class 25. The opposition is based on Portuguese figurative trade mark registration No 350 729, , and European Union figurative trade mark registration No 9 114 398, . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union figurative trade mark registration No 9 114 398.

a) The goods and services

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

Class 35: Advertising; business management; business administration; office functions; all only relating 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, whips, harness and saddlery, clothing, footwear and headgear.

The contested goods, following a limitation made by the applicant, are:

Class 25: Shoes, all the aforesaid goods only in connection with horse riding.

The contested goods are shoes, all the aforesaid goods only in connection with horse riding and the opponent’s services are a variety of services that target professional undertakings related to the promotion of goods and/or services, business administration and office functions. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. Business administration services are intended to help companies with the performance of business operations and consist of organising people and resources efficiently so as to direct activities toward common goals and objectives, including activities such as personnel recruitment and payroll preparation. Finally, services in connection with office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. Therefore, the contested shoes, all the aforesaid goods only in connection with horse riding and the opponent’s services have nothing relevant in common. They have different natures and purposes, do not have the same distribution channels, do not target the same public, are not in competition and are not offered by the same companies. Therefore, the contested goods are dissimilar to all the opponent’s services.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition insofar as it is based on European Union trade mark registration No 9 114 398 must be rejected.

The examination of the opposition will continue on the basis of Portuguese trade mark registration No 350 729.

a) The goods

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

Class 25: Shoes and belts.

The contested goods are the following:

Class 25: Shoes, all the aforesaid goods only in connection with horse riding.

The contested shoes, all the aforesaid goods only in connection with horse riding, are included in the broader category of the opponent’s shoes. Therefore, they are identical.

c) 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.

The degree of attention for the contested goods is average.

d) The signs

	Cavalluna
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 a figurative mark consisting of a black stylised depiction of a prancing horse and below it the word ‘Cavalinho’, which means in Portuguese ‘a small horse’. The sign is not descriptive, allusive or otherwise weak, or non-distinctive in relation to the relevant goods, and therefore it has an average degree of distinctiveness. The earlier mark has no element that is more dominant or distinctive than other elements.

The contested sign is the word mark ‘Cavalluna’ which is meaningless for the relevant public, and has a normal degree of distinctiveness.

Visually, the signs coincide in the beginning of their verbal elements, ‘Caval’, but they differ in their endings, ‘inho’ of the earlier Portuguese mark, and ‘luna’ of the contested sign. They also differ in the depiction of a horse in the earlier mark and in the stylisation of its verbal element. The signs only coincide in some letters of their verbal element.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Caval’ present identically in both signs. The pronunciation differs in the sound of their endings, ‘inho’ of the earlier Portuguese mark, and ‘luna’ of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

e) 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.

f) 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

The goods are identical. They target the public at large with an average degree of attention. The distinctiveness of the earlier mark is normal.

The signs are visually similar to a low degree, aurally similar to an average degree and conceptually not similar.

It must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

(12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35).

In the present case, the similarities between the signs are confined to the five letters that they have in common. However, they differ in the concept conveyed by the earlier mark and in the remaining letters and figurative elements, which produce sufficient visual differences to result in the signs creating different overall visual impressions.

Considering all the above, even for identical goods there is no likelihood of confusion on the part of the public. Therefore, the opposition must also be rejected insofar as it is based on Portuguese trade mark registration No 350 729.

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 (former 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.

The Opposition Division

Andrea VALISA

Aurelia PEREZ BARBER

Arkadiusz GORNY

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.