OPPOSITION No B 3 063 214

J. Marçal De Matos & Filhos, LDA., Avenida Ferreira de Castro, nº 55, 2605-464, Casal de Cambra, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, LDA., Rua Castilho, 167, 2º andar, 1070-050 Lisbon, Portugal (professional representative)

a g a i n s t

Bridalchique LDA, Travessa de Monsanto 75, 4250-295 Porto, Portugal (applicant).

On 13/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 214 is upheld for all the contested goods.

2. European Union trade mark application No 17 900 803 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 900 803 for the word mark ‘LVSITANO’. The opposition is based on earlier Portuguese trade mark registration No 362 528 for the figurative mark . 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.

a) The goods

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

Class 25: Headgear, belts, clothing.

The contested goods are the following:

Class 25: Suits; dinner suits; shirts for suits; men's suits; leisure suits; dress pants; one-piece suits; three piece suits [clothing]; evening suits; shirts; overshirts; collared shirts; dress shirts; woven shirts; short-sleeve shirts; turtleneck shirts; long-sleeved shirts; trousers; pantsuits; morning coats; cummerbunds; dinner jackets; neckties; ascots (ties); silk ties; dress shoes; evening wear; formalwear; fascinator hats; waist belts; belts [clothing]; leather belts [clothing]; belts made out of cloth; coats; heavy coats; jackets [clothing]; casual jackets; blousons; long jackets; camouflage jackets; cardigans; coats of denim; gilets; stuff jackets [clothing]; footwear; skorts; short trousers; culotte skirts; leotards; weatherproof pants; leggings [trousers]; stretch pants; casual footwear; sneakers; rubbers [footwear].

All the contested goods are either identical or similar to the opponent’s earlier clothing which, as a broad category, includes most of the contested goods, or, at least, is similar to the remaining contested goods such as casual footwear or sneakers: this is because not only they serve the same purpose – covering and protecting parts of the human body and for fashion – but they are also often found in the same retail outlets and target the same public. Consumers looking for clothing articles will expect to find such goods in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both. Therefore, the goods under comparison are held to be at least similar.

b) 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 at least similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

.	LVSITANO
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 coinciding verbal element (‘LUSITANO’/’LVSITANO’) is meaningful for the relevant public that will understand it as a famous Portuguese horse breed (‘cavelo lusitano’) or as an older word (in particular, an adjective, ‘Portuguese’) or poetic metaphore used by Portuguese writers for ‘Portuguese people’ (see Portuguese Dictionary online Priberam, extracted on 09/08/2019 at https://dicionario.priberam.org/lusitano). The spelling with a letter ‘V’ instead of the letter ‘U’ in the contested sign will not alter this meaning as it would in any event be perceived as a variant (or misspelling) of, if not be misread as, ‘LUSITANO’, thus referring to the same concept. As the semantic content is in any event sufficiently fanciful and arbitrary in relation to the goods at issue because it does not convey any specific information about their objective characteristics, the meaning of this verbal element does not diminish its distinctiveness. It is, therefore, held normally distinctive.

The earlier mark is a figurative sign, consisting of the verbal element ‘LUSITANO’ (depicted in a fairly standard black, and underlined, typeface), which as seen above is arbitrary for the relevant public and thus of normal distinctiveness. Underneath the verbal element is depicted the image of a horse. While the figurative element is certainly not devoid of distinctiveness - as it is likewise sufficiently fanciful for all the goods at issue -, however, 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). In the present case, the public will certainly refer to the earlier mark by the verbal element ‘LUSITANO’, despite the fact that it is significantly smaller in size than the figurative element of the horse.

The earlier mark has no elements that are more visually eye-catching (dominant) than other elements.

The contested sign is a pure word mark consisting of the verbal element ‘LVSITANO’. For reasons detailed above, this element is meaningful and has average distinctiveness.

This means that visually the signs are similar at least to an average degree since the relevant consumer will rather notice the coincidence in the signs’ common and distinctive verbal element ‘LU(V)SITANO, than the additional figurative element of the horse in the earlier mark (which is furthermore not relevant for the aural comparison). Aurally, indeed, the signs will be identically pronounced, as detailed above.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will refer to the same concept of a horse for part of the public that will understand ‘LUSITANO’ (as well as the figurative element of the horse) as a reference the famous Portuguese horse, the signs will be highly similar conceptually for that part of the public, and similar to an average degree for the remaining part that understands ‘lusitano’ as the old or poetic term for ‘portuguese’.

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

d) 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 no meaning for 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.

e) 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 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).

The signs almost coincide in a distinctive element of the earlier mark, which also forms the entire contested sign. Consequently, they are visually and conceptually similar at least to an average degree, and aurally identical, as detailed above. The goods are at least similar and the attention of the general public will be average.

Account must be 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).

Furthermore, 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 covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, merely configured in a different way according to the type or the origin of goods that it designates.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration compared above. It follows that the contested sign must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

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.