OWEN & SONS | Decision 2733007
Date Published: Sep 22, 2017
OPPOSITION No B 2 733 007
Moltgrand S.L., C/Comerç, 4-7, P.I. L’Avenar, 43883 Roda de Bara (Tarragona), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Ellos AB, Box 961, 501 10 Borås, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative).
On 04/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 733 007 is upheld for all the contested goods.
2. European Union trade mark application No 15 368 582 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 15 368 582. The opposition is based on European Union trade mark registration No 15 202 567. 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 goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Headgear; clothing; footwear.
The contested goods are the following:
Class 25: Clothing; footwear; headgear.
Clothing; footwear; headgear are identically contained in both lists of 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 is average.
- 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, for which all the verbal elements have a meaning.
The earlier mark is a figurative mark consisting of the verbal elements ‘OWEN’ and ‘JONES’, with a stylised ampersand between them, written in white upper case letters, as well as the expression ‘-Tailoring Stories since 1888-’ written underneath in white title case letters so small as to be almost negligible. All the elements are placed against a black rectangular background.
The contested sign is a figurative mark consisting of the verbal elements ‘OWEN’ and ‘SONS’, connected by an ampersand, written in black upper case letters, and, above these, an emblem of an eagle.
The element ‘OWEN’, included in both signs, will be understood as a male name (of Welsh origin) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The same finding applies to the second verbal element in the earlier mark, namely the word ‘JONES’, which will also be perceived as a name, most likely as a surname of Anglo-Welsh origin. As suggested by the use of the ampersand between the two names, they have an equally distinctive presence in the earlier mark.
In addition to having an almost negligible character, the element ‘-Tailoring Stories (since 1888)-’ of the earlier mark is descriptive of the nature of some of the relevant goods, namely clothing and headgear, and allusive for the remaining goods, namely footwear. Furthermore, this element bears an indication of the year of foundation of the company manufacturing the relevant goods, namely ‘since 1888’, which is also considered weak. Consequently, these elements are non-distinctive or weak for all the relevant goods.
Apart from this almost negligible verbal part, the earlier sign is composed of distinctive verbal elements, ‘OWEN & JONES’, and a less distinctive figurative element of a purely decorative nature, namely the black background. Therefore, the verbal elements are more distinctive than the figurative elements.
The contested sign, on the other hand, consists of a distinctive verbal element, ‘OWEN’, and a verbal element (preceded by an ampersand) with a secondary meaning within the mark, namely ‘& SONS’, which will be perceived by the relevant public as a reference to the fact that the applicant’s business is family-owned. Although not descriptive of the nature of the goods and services, this verbal element will be paid little attention by the relevant public, as it is often encountered in business names.
As implied above, due to their large size and central position, the elements ‘OWEN & JONES’ in the earlier sign are the dominant elements, as they are the most eye-catching. However, the contested sign has no elements that are more dominant than other elements.
Visually, the signs coincide in their beginnings, ‘OWEN &’; they differ in their second parts, namely ‘JONES’ in the earlier mark and ‘SONS’ in the contested sign. However, 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. Furthermore, the signs differ in the additional expression ‘-Tailoring Stories since 1888-’ in the earlier mark, which, in addition to its almost negligible character, is considered non-distinctive or weak as a whole, and in the additional figurative elements, as described above, in particular the emblem of an eagle. Nevertheless, 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, for all the reasons listed above, the signs are considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the characters ‛OWEN &’, which will be pronounced as ‘OWEN and’. The pronunciation differs in the sounds of the second parts of the signs, ‛JONES’ and ‘SONS’. However, for the English-speaking public the pronunciation of these two elements (‘jōnz’ versus ‘sons’) may be very similar. Due to its almost negligible character, the additional expression in the earlier mark will not be pronounced at all. Therefore, the signs are considered aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, as well as to the distinctiveness of particular elements, as referred to above. It may therefore be concluded that, insofar as both marks contain the name ‘OWEN’ as their first verbal element and have in common the concept conveyed by the use of an ampersand, they are conceptually similar to an average degree.
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 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, despite the presence of some non-distinctive and weak elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods are identical and the degree of attention of the relevant public is average.
The signs are visually, aurally and conceptually similar to an average degree, to the extent that each contains the distinctive name ‘OWEN’ in combination with an ampersand and another element. Firstly, 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).
Secondly, 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).
As stated above, the marks include the identical distinctive name ‘OWEN’, which, in both marks, is followed by another element; in the contested mark, this element, ‘SONS’, due to its commonplace character, is considered to have less impact than the first part of the mark. It cannot be ruled out that consumers may perceive the two signs as designating related businesses, since the strong concept of the name ‘OWEN’ is present in both signs as the main indication of origin.
Furthermore, the similar structures and stylisations, as well as the positioning of the coinciding verbal element at the beginning of each sign, are other factors that have to be taken into account when assessing the marks in relation to the clothing and design sector, where the visual impression has a strong impact during purchase.
It should be taken into account that 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). As established above, the two marks would be used for identical goods and this finding is sufficient to counterbalance the differences between the signs.
In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘OWEN’. In support of its argument, the applicant refers to several trade mark registrations in the European Union.
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 the element ‘OWEN’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 202 567. It follows that the contested trade mark must be rejected for all the contested goods.
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 KASPERIŪNAITÉ | Manuela RUSEVA | Benoît VLEMINCQ |
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.