HUSKY | Decision 0970212 - Husky of Tostock Limited v. HUSKY CZ s.r.o.

Date Published: Oct 11, 2017

OPPOSITION No B 970 212

Husky of Tostock Limited, The Guildhall 34 Market Hill Framlingham, Woodbridge, Suffolk IP13 9AZ, United Kingdom (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Husky CZ s.r.o., Hutská 2985/5, 4 Praha, Czech Republic (applicant), represented by Čermák a spol., Elišky Peškové 15, 150 00, Praha 5, Czech Republic (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 970 212 is upheld for all the contested goods, namely 

Class 18: Briefcases, backpacks, travel luggage and sports bags.

Class 25: Clothing, footwear and headgear.

2.        European Union trade mark application No 4 442 431 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 4 442 431 namely against all of the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registration No 3 213 576. The opponent invoked Article 8(1)(a) and (b), 8(5) EUTMR.

PRELIMINARY REMARKS – BASIS OF THE OPPOSITION

On 14/02/2006, the opponent filed a notice of opposition in which it clearly stated that the opposition is based on European Union trade mark registrations No 152 546 ‘HUSKY’ (word mark) and No 3 213 576  (the latter indicated under ‘OHIM-Form 2.8 EN’).

It is evident from the documentation on file that European Union trade mark registration No 3 213 576 constitutes a valid earlier mark which was claimed as basis of the opposition within the opposition period set by Article 41(1) EUTMR. Although in its observations the opponent makes continuous references to European Union trade mark registration No 152 546 ‘HUSKY’ (word mark), the opponent did not expressly restrict the basis of the opposition to this earlier right, as claimed by the applicant.

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 trade mark registration No 3 213 576.

1. The goods

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

Class 18: Leather and leather imitations and articles made from these materials which are not included in other classes; animals skins, bags, trunks and travelling bags, umbrellas, parasols and walking sticks; whips and harness maker's products.

Class 25: Shirts, shorts, skirts, blouses, trousers, jackets, coats, waistcoats, hats, neckties, articles of underclothing; lingerie, hosiery, pyjamas, night-dresses, sleeping garments, negligees, dressing gowns, jumpers, cardigans, pullovers, sweaters, overalls, swimming costumes; dresses, dungarees, over-trousers, boots, shoes, sandals, slippers, tops, caps, scarves, robes, capes, aprons, jeans, socks, leg-warmers, dancewear, wrist-bands, head-bands, gloves; mittens, belts; head-gear and footwear.

The contested goods are the following:

Class 18: Briefcases, backpacks, travel luggage and sports bags.

Class 25: Clothing, footwear and headgear.

Contested goods in Class 18

The contested briefcases and travel luggage overlap with the broad category of the opponent’s articles made from these materials [leather and leather imitations] which are not included in other classes. Therefore, they are identical.

The contested backpacks are included in the broad category of the opponent’s travelling bags. Therefore, they are identical.

The contested sports bags are highly similar to the opponent’s trunks and travelling bags as they have the same nature, purpose and method of use and share the same points of sale.

Contested goods in Class 25

The contested footwear and headgear are identically contained in both lists of goods.

The contested clothing include, as a broader category the opponent’s shirts, shorts, skirts, blouses, trousers, jackets, coats, waistcoats, neckties, articles of underclothing; lingerie, hosiery, pyjamas, night-dresses, sleeping garments, negligees, dressing gowns, jumpers, cardigans, pullovers, sweaters, overalls, swimming costumes; dresses, dungarees, over-trousers, tops, scarves, robes, capes, aprons, jeans, socks, leg-warmers, dancewear, wrist-bands, gloves; mittens and belts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 found to be identical and highly similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 figurative and consists of the word ‘HUSKY’ written in black standard uppercase characters outlined in white and preceded by a realistic representation of the head of a dog.

The contested sign, which is also figurative, is composed of the word ‘HUSKY’ written in black slightly stylised uppercase characters preceded by a blue circular device with two concentric inner circles, the first one in black and the central one in white.

The element ‘HUSKY’ of both the earlier mark and the contested sign will be understood as designating ‘a large dog with long thick fur, used for pulling sledges over the snow’ (http://dictionary.cambridge.org/dictionary/english/husky) by a vast majority of the relevant public (or at least by consumers interested in dogs in the vast majority of the territories). As this element is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

It cannot be discarded that this same element has no meaning for a minor part of the relevant public for whom this word is also distinctive.

The figurative element of the earlier mark will be associated with the head of a dog, probably of the husky type (at least by the part of the relevant public that understands the word ‘HUSKY’ within the above indicated meaning). As this association is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Contrary to the applicant’s claims it is considered that the mere representation of three concentric circles in the contested sign will not be associated with an eye. In the absence of any meaning, the figurative element of the contested sign will be merely perceived as a decoration.

None of the marks has an element that could be considered more distinctive than other elements.

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).

Visually, the signs coincide in the distinctive element ‘HUSKY’, which is the only word element in both marks. However, they differ in the font used for the common word and in the figurative and colour elements preceding ‘HUSKY’ in both marks and representing the head of a dog, in the earlier mark, and a blue circular device with two concentric inner circles, in the contested sign. However, the later are minor aspects with much less impact than the verbal component of the sign, as explained above.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛HUSKY’, present identically in both signs. The figurative elements are not subject to a phonetic assessment.

Therefore, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived by a vast majority of the relevant public as designating the same dog’s breed, the signs are conceptually identical. This is further supported by the fact that the figurative element of the earlier mark is a graphic representation of this concept and that the figurative element of the contested sign does not have any meaning and will be merely perceived as a decorative element.

For the part of the public which does not associate the word ‘HUSKY’ with any meaning the signs are not conceptually similar since the figurative element of the earlier mark will be understood as a representation of a dog whereas no meaning will be perceived in the contested mark.

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

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 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).

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.

In the present case, it has been established that the contested goods are identical and highly similar to the opponent’s goods.

The signs are aurally identical and conceptually, either identical or dissimilar because of the figurative element of the earlier mark which represents a dog (of the Husky type). Moreover, they are visually similar to an average degree to the extent that they coincide in the word element ‘HUSKY’ which is fully distinctive for the goods in question. The signs additionally coincide in their structure, combining a figurative element followed by the word ‘HUSKY’ in black uppercase letters. The only differences between the signs are the type of font used, the figurative element preceding the marks and the use of the colour blue in the contested sign. These differing elements of the marks being merely decorative have less impact, as explained above.

The earlier mark enjoys a normal distinctiveness and the degree of attention of the relevant public is average.

Account is 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).

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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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 European Union trade mark registration No 3 213 576. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right examined 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, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and (5) EUTMR.

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

Sandra KASPERIŪNAITĖ

Isabel DE ALFONSETI HARTMANN

Dorothée SCHLIEPHAKE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.