invictus | Decision 2637695 - Invicta spa v. Martine Fennelly

Date Published: Sep 24, 2017

OPPOSITION No B 2 637 695

Invicta Spa, Via Fornacino 96, 10040 Leinì (TO), Italy (opponent), represented by Buzzi, Notaro & Antonielli d'Oulx, Via Maria Vittoria, 18, 10123 Torino, Italy (professional representative).

a g a i n s t

Martine Fennelly , Lortzinger Str. 5, 53179 Bonn, Germany (applicant), represented by Steffen Koch, Holtorfer Str. 35, 53229 Bonn, Germany (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 637 695 is partially upheld, namely for the following contested goods:

Class 18:        Fastenings for saddles; riding saddles; animal harnesses; harnesses.

Class 25:        Jodhpurs; riding jackets; jodhpurs; clothing for horse-riding [other than riding hats].

2.        European Union trade mark application No 14 633 796 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 633 796. The opposition is based on European Union trade mark registration No 506 451, international trade mark registration No 1 201 001 designating the European Union and Italian trade mark registration No 1 632 531. 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 Italian trade mark registration No 1 632 531. This trade mark is not subject to obligation of use.  

1. The goods

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

Class 18:        Articles of leather and imitations leather; rucksacks, backpacks, school bags, shoulder bags for carrying infants bags, shopping bags, travelling bags and duffel bags for travel, bags and holdalls for sports; handbags; bags for campers; beach bags; backpacks for hiking and climbing, satchels, briefcases, pocket wallets, purses; key cases, hip bags, suitcases, umbrellas; trunks, walking sticks; overnight suitcases, vanity cases, sample bags, garment bags for clothing, wheeled bags, wheeled backpacks and wheeled suitcases.

Class 25:        Articles of clothing, footwear, headgear; active wear, sportswear, namely trousers, sport suits, shorts; swimwear, bathing suits, bikinis, slips, swimsuit shorts, swimming caps; pareos, bras, ponchos; underwear, namely bodies, boxers, T-shirts, tank tops, bras, culottes, leotards, shorts, slips, thongs; leather wear and lounge wear; bathrobes, nightdresses, pajamas; apparel of any design and nature made from fabrics of any nature, namely, pants, trousers, work clothing and work overalls, jeans, shorts, jackets, coats, waistcoats, overcoats, raincoats, hosiery, knitwear, sweaters, cardigans, fleece tops and bottoms, jumpers, twin sets, woven shirts; dresses, training and track suits, bodies, shirts, plush shirts, polo shirts, nightshirts for men, T-shirts, undershirts, cut and sew tops, dresses, skirts, trousers-skirts, gowns; socks; dressing gowns; bands; balaclavas, scarves, silk scarves, neck and face masks (bands); gloves and mittens, ski gloves; headwear, namely hats, caps, bandanas, basques, visors, wrist bands; belts and ties; footwear, shoes, dress shoes, sneakers, boots, chaps, sandals, slippers, sport and athletic shoes, studded shoes, mountaineering shoes; ski boots and trekking boots, gaiters, heeled shoes, bands for protecting face and ear from cold.

The contested goods are the following:

Class 18:        Saddle cloths for horses; fastenings for saddles; riding saddles; animal harnesses; harnesses.

Class 25:        Jodhpurs; riding jackets; jodhpurs; clothing for horse-riding [other than riding hats].

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 opponent’s list of goods 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.

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 18

The contested fastenings for saddles; riding saddles; animal harnesses; harnesses are goods made of leather. Therefore, the opponent’s articles of leather cover goods that may be of the same nature as the applicant’s. However, since the opponent’s list of goods does not expressly clarify the kind of leather-based articles its mark covers in Class 18, it cannot be assumed that its goods are produced by the same companies as the applicant’s. Moreover, it cannot be assumed that the conflicting goods’ methods of use coincide, that they share the same distribution channels or that they are complementary or in competition. Therefore, the contested fastenings for saddles; riding saddles; animal harnesses; harnesses are deemed similar to a low degree to the opponent’s articles of leather.

The contested saddle cloths for horses are made of textiles (cloths) and are therefore made of different materials (and nature) than the opponent’s articles of leather or imitations of leather. Since the opponent’s list of goods does not expressly clarify the kind of leather-based articles its mark covers in Class 18, it cannot be assumed that the opponent’s goods coincide in purpose and methods of use with those of the applicant. Moreover, it cannot be assumed that these goods are produced by the same companies, that they share the same distribution channels or that they are in competition or complementary. Therefore, saddle cloths for horses are deemed dissimilar to articles of leather or imitations of leather.

Furthermore, the contested saddle cloths for horses differ in nature from the remaining goods of the opponent in Class 18, namely rucksacks, backpacks, school bags, shoulder bags for carrying infants bags, shopping bags, travelling bags and duffel bags for travel, bags and holdalls for sports; handbags; bags for campers; beach bags; backpacks for hiking and climbing, satchels, briefcases, pocket wallets, purses; key cases, hip bags, suitcases, umbrellas; trunks, walking sticks; overnight suitcases, vanity cases, sample bags, garment bags for clothing, wheeled bags, wheeled backpacks and wheeled suitcases. These goods do not coincide in purpose and methods of use and they are not complementary or in competition. Therefore, they are dissimilar.

Although the contested saddle cloths for horses are made of textiles (cloths) and therefore can have the same nature in the very broadest sense of the word as the opponent’s clothing in Class 25, these goods have different purposes (cloths used specifically for horse saddles versus various garments used to protect the human body) and they have different methods of use. Moreover, these goods are not complementary and are not in competition. Therefore, the contested saddle cloths for horses are dissimilar to the opponent’s goods in Class 25, namely articles of clothing, footwear, headgear; active wear, sportswear, namely trousers, sport suits, shorts; swimwear, bathing suits, bikinis, slips, swimsuit shorts, swimming caps; pareos, bras, ponchos; underwear, namely bodies, boxers, T-shirts, tank tops, bras, culottes, leotards, shorts, slips, thongs; leather wear and lounge wear; bathrobes, nightdresses, pajamas; apparel of any design and nature made from fabrics of any nature, namely, pants, trousers, work clothing and work overalls, jeans, shorts, jackets, coats, waistcoats, overcoats, raincoats, hosiery, knitwear, sweaters, cardigans, fleece tops and bottoms, jumpers, twin sets, woven shirts; dresses, training and track suits, bodies, shirts, plush shirts, polo shirts, nightshirts for men, T-shirts, undershirts, cut and sew tops, dresses, skirts, trousers-skirts, gowns; socks; dressing gowns; bands; balaclavas, scarves, silk scarves, neck and face masks (bands); gloves and mittens, ski gloves; headwear, namely hats, caps, bandanas, basques, visors, wrist bands; belts and ties; footwear, shoes, dress shoes, sneakers, boots, chaps, sandals, slippers, sport and athletic shoes, studded shoes, mountaineering shoes; ski boots and trekking boots, gaiters, heeled shoes, bands for protecting face and ear from cold.

Contested goods in Class 25

The contested jodhpurs (listed twice); riding jackets; clothing for horse-riding [other than riding hats] are included in the broad category of the opponent’s articles of clothing. Therefore, they are identical.

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 or similar to a low degree are directed at the public at large.

The degree of attention is considered average.  

3. The signs

INVICTUS
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Both signs contain the verbal element ‘INVICTUS’, which is the sole element of the earlier mark and the only verbal element of the contested sign (a figurative mark) depicted in a stylised lower case green font in the sign. For the Italian consumers, ‘INVICTUS’, which is Latin for ‘undefeated’ or ‘invincible’, will be perceived with a reference to the Italian descendant of ‘INVICTUS’, namely ‘invitto’. Such a meaning is not related to the goods and is distinctive. Moreover, the contested sign also contains a stylised depiction of a horse. For the contested goods, which are related to horses and horse-riding, the concept of a horse is of very low distinctiveness.

Visually, the signs coincide in the distinctive verbal element ‘INVICTUS’ and differ in the figurative and graphical elements of the contested sign. The figurative element of the contested sign (the horse) refers to the relevant goods. In addition, consumers generally tend to focus on the word elements of signs. Indeed, 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). Therefore, the signs are visually highly similar.

Aurally, both signs will be pronounced identically as ‘INVICTUS’ is the only element that will be pronounced in either sign.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as a reference to the distinctive concept of ‘undefeated’ or ‘invincible’ by the Italian consumers, the signs are conceptually highly similar since the differing concept of a horse in the contested sign is of low distinctiveness (for the reasons explained above) and has a very reduced impact on the conceptual comparison of the signs.

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.

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. The applicant makes reference to that ‘INVICTUS’ is weak, since it indicates that the goods ‘provide special protection, or goods that protect the user’. The Opposition Division cannot share this view. In the present case, as stated above in section c) of this decision, the earlier trade mark 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods are partly identical, partly similar to a low degree and partly dissimilar. The signs are visually and conceptually highly similar and are aurally identical. Bearing this in mind, the similarity between the signs is such that it is likely to lead consumers to confuse them even in relation to the goods found to be similar to a low degree. Account is also 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).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘INVICTUS’. In support of its argument the applicant refers to some trade mark registrations in the European Union, France, Italy, Poland, Romania and Spain.

The Opposition Division cannot share the applicant’s view of ‘INVICTUS’ being weak for the goods in question and makes reference to the assessment of the distinctiveness of the earlier mark in section d) of this decision. Moreover, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘INVICTUS’.

The applicant also makes reference to its own German trade mark registration, identical to the present contested EU trade mark registration and concerning the same or related goods, was not subject to an opposition on the part of the opponent and to its word mark ‘INVICTUS’.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division finds to exists between the two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Under these circumstances, the applicant’s claims must be set 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 Italian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree 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.

The opponent has also based his opposition on parts of the goods and services of international trade mark registration No 1 201 001 for the word mark ‘INVICTA’, namely articles of clothing, footwear, headgear; active wear, sportswear, namely trousers, sport suits, shorts; swimwear, bathing suits, bikinis, slips, swimsuit shorts, swimming caps; pareos, bras, ponchos; underwear, namely bodies, boxers, T-shirts, tank tops, bras, culottes, leotards, shorts, slips, thongs; leather wear and lounge wear; bathrobes, nightdresses, pajamas; apparel of any design and nature made from fabrics of any nature, namely, pants, trousers, work clothing and work overalls, jeans, shorts, jackets, coats, waistcoats, overcoats, raincoats, hosiery, knitwear, sweaters, cardigans, fleece tops and bottoms, jumpers, twin sets, woven shirts; dresses, training and track suits, bodies, shirts, plush shirts, polo shirts, nightshirts for men, T-shirts, undershirts, cut and sew tops, dresses, skirts, trousers-skirts, gowns; socks; dressing gowns; bands; balaclavas, scarves, silk scarves, neck and face masks (bands); gloves and mittens, ski gloves; headwear, namely hats, caps, bandanas, basques, visors, wrist bands; belts and ties; footwear, shoes, dress shoes, sneakers, boots, chaps, sandals, slippers, sport and athletic shoes, studded shoes, mountaineering shoes; ski boots and trekking boots, gaiters, heeled shoes, bands for protecting face and ear from cold in Class 25. Since this mark covers the same scope of goods, as the opponent’s Italian trade mark registration in Class 25, and since these goods are dissimilar to the remaining contested goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The opponent has also based its opposition on EU trade mark registration No 506 451, which is subject to the obligation of use.

PROOF OF USE – EU TRADE MARK REGISTRATION No 506 451

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of EU trade mark No 506 451.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 30/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 30/10/2010 to 29/10/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 18:        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.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 24/11/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/01/2017 to submit evidence of use of the earlier trade mark. This time limit was further extended, and on 21/03/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep the commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annex 1: Samples of licence contracts showing the licence agreements between the opponent and its retailers.
• Annex 2: Several invoices issued by the opponent’s retailers, dated within the relevant time period. These invoices, as far as the goods on which the opposition is based are concerned, show sales of various bags, backpacks, and wallets/purses.  
• Annex 3: Various products catalogues showing images of various bags, backpacks/rucksacks, wallets and purses as well as ski gloves, protection gear for skiing, ski headgear, diaries, coin cases, skis and ski sticks.  

The earlier mark is registered for goods in Class 18 and the only goods referred to in the evidence, which belong to this class, are various backpacks/rucksacks, bags of different kinds, wallets and purses. The remaining goods shown in the evidence are irrelevant because the earlier mark has no protection as far as they are concerned.

Considering the above, genuine use could, at most, be proven for the goods in Class 18 mentioned and shown in the evidence (annexes 1, 2, 3), namely backpacks, bags, purses and wallets, whereas it is clear that it cannot be proven for the remaining goods for which the earlier mark is registered in Class 18 (or, as said above, for goods for which the earlier mark is not registered).

Bearing in mind that, according to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered, it will, for the purpose of the examination of the opposition, be deemed to be registered only in respect to these particular goods and services. Since goods such as backpacks, bags, wallets, purses already have been deemed dissimilar to the remaining contested saddle cloths for horses, in Class 18 in section a) of this decision, the Opposition Division will not fully undertake an examination of whether the earlier EU trade mark has been put into genuine use in the relevant territory for the abovementioned goods. The outcome could not be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Finally, the Opposition Division has noted that the opponent has submitted an application to register a declaration of goods other than those covered by the literal meaning of the class heading under Article 28(8) EUTMR, in its EU trade mark registration No 506 451.

The request is currently under examination. However, irrespective of whether or not the request will be accepted, the Opposition Division has already examined the opposition in the light most favourable to the opponent, namely that genuine use is proven for all the goods mentioned and shown in the evidence submitted. In particular, the Opposition Division notes that genuine use could not in any case be proven for goods such as collars for animals, covers for animals or muzzles, should the declaration be accepted, because such goods are not even mentioned or shown in the evidence.

Therefore, the outcome of the opponent’s application for a declaration under Article 28(8) EUTM does not affect the outcome of this opposition and the fact that it must be rejected in relation to the contested saddle cloths for horses.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Justyna GBYL

Christian RUUD

Catherine MEDINA

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.