evoke | Decision 2704917
Date Published: Sep 24, 2017
OPPOSITION No B 2 704 917
Jaguar Land Rover Limited, Trade Marks Department W/1/6, Abbey Road, Whitley, Coventry, Warwickshire 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
Pangi Holding Oy, Kistolantie 96, 25130 Salo, Finland (applicant).
On 25/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 704 917 is upheld for all the contested goods, namely
Class 25: Clothing.
2. European Union trade mark application No 15 148 737 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition initially directed against all the goods of European Union trade mark application No 15 148 737. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 141 229. The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.
PRELIMINARY REMARK ON THE EXTENT OF THE OPPOSITION
On 15/12/2016, the opponent filed a letter containing the facts, arguments and evidence on which the present opposition is based. In this letter, the opponent restricted its arguments to the contested goods in Class 25, without any reference to the goods in Classes 5 and 30 of the contested mark, and concluded it by making the following request to the Office: ‘that class 25 of the contested application be rejected’.
The Opposition Division therefore considers that, when substantiating the opposition, the opponent effectively limited its extent to part of the goods for which the contested mark is applied for, namely to those in Class 25.
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 United Kingdom trade mark registration No 3 141 229.
- The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, namely, t-shirts, tops, overalls, coveralls, uniforms, smocks, sweatshirts, sweaters, sweatpants, polo shirts, underclothing, pajamas, outerwear, sleep masks, pocket squares, suits, hooded pullovers, shorts, fleece pullovers, coats, dresses, skirts, jackets, vests, blazers, anoraks, scarves, sashes for wear, socks, stockings, trousers, bandanas, bathing suits, cloth bibs, bathing trunks, costumes, belts, gloves, ties; headgear, hats, caps, head scarves, head wraps, headbands, visors, ear muffs, knitted beanies; footwear, namely shoes, boots, slippers, hosiery, sandals, socks.
The contested goods are the following:
Class 25: Clothing.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the list of goods of the earlier UK trade mark No 3 141 229 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
Contested goods in Class 25
The contested clothing includes, as a broader category, the opponent’s t-shirts, tops, overalls, coveralls, uniforms, smocks, sweatshirts, sweaters, sweatpants, polo shirts, underclothing, pajamas, outerwear, sleep masks, pocket squares, suits, hooded pullovers, shorts, fleece pullovers, coats, dresses, skirts, jackets, vests, blazers, anoraks, scarves, sashes for wear, socks, stockings, trousers, bandanas, bathing suits, cloth bibs, bathing trunks, costumes, belts, gloves, ties. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 will be average.
- The signs
EVOQUE | evoke |
Earlier trade mark | Contested sign |
The relevant territory is 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).
In the present case, there is no need to analyse if some of the elements of each of the marks in conflict are more distinctive or dominant than others, since they only contain a single verbal element, which is not likely to be split into sub-elements.
Visually, the signs coincide in their first three letters (E-V-O) and in the last one (E), and they only differ in the letters ‘QU’ of the earlier mark and the letter ‘K’ of the contested sign.
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.
Taking into account that the signs coincide in four out of five/six letters and that they both begin by the same three letters, they are considered to be visually highly similar.
Aurally, the signs are likely to be pronounced in an identical way by the majority of the relevant public.
Conceptually, the contested sign means in English ‘bring or recall to the conscious mind’. Although the earlier sign does not have a meaning as such in English, the fact that the word ‘evoque’ is very close to ‘evoke’ means that the majority of the relevant public will perceive the former as a mere misspelling and understand it as referring to the same concept as the latter. Therefore, the signs are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 earlier UK trade mark No 3 141 229 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.
- Global assessment and conclusion
The Opposition Division considers, taking into account the identity of the goods, the average degree of attention of the public and the average degree of distinctiveness of the earlier mark, that the slight visual dissimilarities between the signs cannot counteract the visual similarities and the aural and conceptual identity between them, and therefore that there is a clear likelihood of confusion on the part of the public.
Consequently, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 141 229. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier United Kingdom trade mark registration No 3 141 229 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed under Article 8(1)(b) EUTMR, there is no need to examine the other earlier rights and grounds invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Carmen SÁNCHEZ PALOMARES | José Antonio GARRIDO OTAOLA | Michaela SIMANDLOVA |
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.