OPPOSITION No B 3 074 219

Jennifer Rodríguez Castilla, Calle Ancha nº 39, 18360 Huetor Tajar, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2 piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Barnabás Gárdonyi, Nagy Lajos király útja 118.4/24., 1149 Budapest, Hungary, and Kíra Alina Kékkovács, Ady Endre utca 17/B., 2244 Úri, Hungary (applicants), represented by Eszter Kaszás, Maros utca 28. 1 /4., 1122 Budapest, Hungary (professional representative).

On 19/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 219 is partially upheld, namely for the following contested goods:

Class 25: Clothing; shoes.

2. European Union trade mark application No 17 962 407 is rejected for all the above goods in Class 25. It may proceed for the remaining goods in Classes 14 and 18.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 962 407 (figurative mark). The opposition is based on Spanish trade mark registration No 3 693 662 (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: Clothing; belts (clothing); footwear; headgear, visors, caps, hats, caps for sports, sports headgear (other than helmets).

The contested goods are the following:

Class 14: Jewellery; key rings; key rings and key chains, and charms therefor; pet jewelry.

Class 18: Saddlery, whips and apparel for animals; dog clothing.

Class 25: Clothing; shoes.

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 14

Contrary to the opponent’s arguments, goods such as jewellery; key rings; key rings and key chains, and charms therefor; pet jewelry in Class 14 are considered dissimilar to clothing, footwear and headgear in Class 25. Their nature and main purpose are different, since clothing, footwear and headgear are intended to cover different parts of the human body, whereas the contested goods are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell jewellery under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.

Contested goods in Class 18

Clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

Whips and apparel for animals are instruments used for driving animals; dog clothing is clothing items intended for dogs; and saddlery is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from that of clothing, headgear and footwear in Class 25. They serve very different purposes (aid in the control and/or riding of animals or clothing for animals versus covering/protecting the human body). They do not usually have the same retail outlets and are not made by the same manufacturers. These goods are not complementary nor in competition. Therefore, contrary to the opponent’s arguments, the contested saddlery, whips and apparel for animals; dog clothing are dissimilar to the opponent’s goods in Class 25.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

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 identical are directed at the public at large. The degree of attention is average.

c) The signs

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 figurative mark consists of the verbal elements ‘French Bulldog’ written in standard letters below the depiction of a French bulldog in black and white. The word ‘Bulldog’, used identically in Spanish, will be perceived by the public as referring to the corresponding breed of dog. The additional word ‘French’ is likely to be understood by the part of the public with some knowledge of English. The meaning of ‘French Bulldog’ is also reinforced by the figurative element depicting a dog of that breed. All the elements of the signs are distinctive for the relevant goods, irrespective of whether the word ‘French’ will be understood or not.

The contested sign contains the depiction of a bulldog in black and white against a black background, with the verbal elements ‘FR BULLDOG’ below it, depicted in stylised white upper-case letters, with the word ‘BULLDOG’ underlined. The verbal element ‘FR’ is of a considerably smaller size and located beneath the drawing of the bulldog. This is the common abbreviation to refer to ‘French’ or ‘France’ and will be understood as such by the relevant public. Therefore, the relevant public will understand the verbal elements as referring to a specific breed of dog, ‘French Bulldog’. This is reinforced by the figurative element. The above considerations about the distinctiveness of these elements are also applicable to this mark.

The rectangular black background of the contested sign is commonplace in trade and merely serves to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to it (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27).

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).

The contested sign’s verbal element ‘BULLDOG’ and its figurative element depicting a bulldog are the co-dominant elements of the sign by virtue of their position and larger size. The earlier mark has no elements that could be considered clearly more dominant than other elements.

Contrary to the applicants’ arguments, when comparing signs’ verbal elements, similarity may be found even though the letters are portrayed in different typefaces, in italics or bold, in upper or lower case or in different colours (18/06/2009, T‑418/07, LiBRO, EU:T:2009:208; 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; 29/11/2012, C‑42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765).

Visually, the signs coincide in the letters ‘Fr**** Bulldog’, which, despite their different typeface, are clearly perceived in both marks. They further coincide in the depiction of a dog leaning slightly to one side, which is positioned over the verbal elements. However, there are differences in these depictions: the position of the dogs’ faces, their eyes and mouths, and the detail of the face of the dog in the contested sign. In addition, they differ in the ending letters/sounds ‘ench’ earlier mark, which have no counterparts in the contested sign.

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

Aurally, the signs coincide in the sounds of the element ‘Bulldog’ and they differ in the sound of the letters ‘FR’ (if this smaller element is pronounced) of the contested sign and in the sound of the element ‘FRENCH’ of the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a ‘French Bulldog’ by part of the public, the signs are conceptually identical. For the part of the public who will not understand the verbal element ‘French’, they are similar to a high degree.

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 her 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.

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 contested goods and services are partly identical and partly dissimilar to the opponent’s goods. They target the public at large, whose degree of attention is average. The earlier mark enjoys a normal degree of distinctiveness.

The marks are visually and aurally similar to an average degree and conceptually identical, at least for part of the public, owing to the coinciding verbal elements ‘FR’ and ‘Bulldog and the depiction of a dog, and the representation of this animal. The slight differences in the depictions of the dogs, the additional ending letters of the earlier mark and the stylisation of the letters are not sufficient to enable the relevant public to safely distinguish between the signs.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the slight visual differences between the signs caused by similar figurative elements are particularly relevant when assessing the likelihood of confusion between them.

In their submissions, the applicants argue that they operate in different areas from the opponent, since they intend to use their mark only for dog clothes and accessories. However, the examination of the likelihood of confusion carried out by the Office is a prospective examination, in contrast to trade mark infringement cases, in which the particular facts and the specific nature of use of the marks are crucial. In other words, in the present case, the Office must take into account those circumstances in which it is usual to expect the type of goods covered by the marks. Therefore, the particular circumstances in which the goods concerned are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59). Therefore, this argument of the applicants has to be put aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Begoña URIARTE VALIENTE

Claudia SCHLIE

Holger KUNZ

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.