patricks | Decision 2800657
Date Published: Sep 22, 2017
OPPOSITION No B 2 800 657
Shoe Branding Europe BVBA, Meersbloem – Melden 42, 9700 Oudenaarde, Belgium (opponent), represented by Løje, Arnesen & Meedom Advokatpartnerselskab, Øster Allé 42, 6, 2100 København Ø, Denmark (professional representative)
a g a i n s t
Patrick Kidd, Andes Botallack, Penzance TR19 7QG, United Kingdom and Patricks Universal Exports Pty Ltd, 110/152 Campbell Parade Bondi Beach, Bondi Beach 2026, Australia (applicants).
On 07/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 800 657 is upheld for all the contested goods, namely:
Class 18: Bags and other carriers.
2. European Union trade mark application No 15 718 554 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 against some of the goods of European Union trade mark application No 15 718 554 for the word mark ‘patricks’, namely against some of the goods in Class 18. The opposition is based on, inter alia, European Union trade mark registration No 8 771 933 for the 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.
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 8 771 933.
- The goods
The goods on which the opposition is based are 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.
The contested goods are the following:
Class 18: Bags and other carriers.
The contested bags include, as a broader category, the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Likewise, the contested other carriers include, as a broader category, the opponent’s trunks and travelling bags. 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 relevant public’s level of attention is considered to be average.
- The signs
Patricks | |
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 contested sign is a word mark, composed of the verbal element ‘patricks’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters.
The earlier mark is a figurative mark which consists of the verbal element ‘PATRICK’ written in a rather standard typeface in black bold upper case letters and, to the left of this element, a grey upper case letter ‘P’, portrayed in a stylised typeface.
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.
Considering the conceptual comparison conducted below, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom and Ireland.
The word ‘Patrick’, contained in both signs, is a popular male given name and will be perceived as such. In addition, St. Patrick (‘Christian missionary in Ireland, from the 5th century, probably born in Britain’; see Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/patrick) is the patron saint of Ireland and, bearing in mind the relevant territories at issue, this semantic content will also be evident for all the consumers.
Despite the lack of the apostrophe in the contested sign, the final letter ‘s’ contained therein is likely to be interpreted as denoting possession, i.e. of/from Patrick, Patrick’s.
The initial upper case letter ‘P’ in the earlier mark will be perceived as a stylised reference to the first letter of the aforementioned element, ‘Patrick’, which follows it.
The verbal elements of the marks convey no information as regards the relevant goods and are, therefore, normally distinctive.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘Patrick’, which is entirely included in both marks. The signs differ in the final letter ‘s’ of the contested sign and in the earlier mark’s slight stylisation and initial letter ‘P’, portrayed to the left of the ‘Patrick’ verbal element.
However, it must be noted that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This principle applies fully in the present case, where the figurative component of the earlier mark will have a limited impact on the consumers.
Therefore, it is considered that the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the syllables ‘Pat-rick’, present identically in both signs. The pronunciation differs in the sound of the final letter ‘s’ of the contested sign, which has no counterpart in the earlier mark.
The pronunciation of the marks would also differ in the sound of the additional letter ‘P’, portrayed at the beginning of the earlier mark, which has no counterpart in the contested sign. Nonetheless, the Opposition Division considers that the majority of the relevant public will not pronounce this single letter, as it will instantly perceive it as a stylised reference to the first letter of the aforementioned element, ‘Patrick’, which the consumers will use to readily refer to the sign.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same name and/or historical figure (St. Patrick). Their only semantic difference stems from the fact that the contested sign denotes possession, due to the presence of the final letter ‘s’. The initial letter ‘P’ in the earlier mark does not establish a relevant difference, as it will be perceived as a mere reference to the first letter of the element it precedes.
Therefore, the marks are conceptually 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.
- 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.
- Global assessment, other arguments and conclusion
The contested goods were found to be identical to the goods covered by the opponent’s European Union trade mark registration No 8 771 933.
The signs under comparison were found to be visually, aurally and conceptually highly similar, on account of the common element ‘Patrick’, comprised in the earlier mark and fully reproduced in the contested sign. The signs differ in the final letter ‘s’ in the contested sign and in the stylisation and initial letter ‘P’ of the earlier mark.
As regards the final letter ‘s’ of the contested sign, it will be interpreted as denoting possession, in relation to the name which precedes it, i.e. Patrick. Furthermore, this letter is portrayed in the ending of the sign, where it has a lesser impact for the public, because consumers read from left to right and, therefore, pay more attention to the initial part of verbal elements.
As regards the initial letter ‘P’ of the earlier mark, as previously noted, the public will perceive it as a mere stylised reference to the initial letter of the element ‘Patrick’ which follows it and, consequently, will not attribute to it as much trade mark significance as to this element. Furthermore, for the same reasons, this isolated letter is not likely to be pronounced, as consumers will readily refer to the sign simply as ‘Patrick’.
Finally, in what concerns the stylisation of the earlier mark, as previously explained, the same is rather standard and will be perceived as an ordinary graphic means of bringing the verbal elements in question to the attention of the public. In this regard, it should be noted that consumers will retain in their memory, and refer to the goods in question by their name, ‘Patrick’, rather than by describing the stylisation of the lettering of the mark.
Therefore, bearing in mind that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind, the Opposition Division considers that the visual, aural and conceptual similarities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory, in relation to identical goods.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, such as the United Kingdom and Ireland. 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 8 771 933. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier European Union trade mark registration No 8 771 933 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).
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
Monika CISZEWSKA | Gueorgui IVANOV |
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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.