TOR | Decision 2703786
Date Published: Oct 1, 2017
OPPOSITION No B 2 703 786
Grupo Osborne S.A., Calle Fernán Caballero, 7, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)
a g a i n s t
Brian Gathii, 59 Navestock Crescent, Woodford Green, Greater London IG8 7AZ, United Kingdom (applicant), represented by Axis IP Services Ltd, Peter House, Oxford Street, Manchester M1 5AN, United Kingdom (professional representative).
On 04/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 703 786 is partially upheld, namely for the following goods:
Class 18: Leather bags; work bags; evening bags; casual bags; beach bags; shoulder bags; travelling bags [leatherware]; leather credit card wallets; wallets; purses.
Class 25: Clothing; footwear; headgear.
2. European Union trade mark application No 15 106 057 is rejected for all the above goods. It may proceed for the remaining contested 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 15 106 057. The opposition is based on European Union trade mark registrations No 2 844 264 and No 8 310 534. 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 the following:
EUTM No 2 844 264
Class 18: Goods of leather and imitations of leather (not included in other classes), wallets, suitcases, backpacks, briefcases, purses, umbrellas, parasols and saddlery.
Class 25: Clothing, footwear, headgear; belts.
EUTM No 8 310 534
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
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 14: Jewellery; precious metals; precious stones; precious jewels; watches; cases for watches; chronometric instruments.
Class 18: Leather; imitation leather; leather bags; work bags; evening bags; casual bags; beach bags; shoulder bags; travelling bags [leatherware]; leather credit card wallets; wallets; purses.
Class 25: Clothing; footwear; headgear.
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 and earlier EUTM No 2 844 264
Class 18
Wallets are identically included in both lists of goods.
The contested purses are synonymous with the opponent’s wallets; they are, therefore, identical.
The contested leather credit card wallets are included in the broader category of the opponent’s wallets and they are, therefore, identical.
The contested leather bags; work bags; evening bags; casual bags; beach bags; shoulder bags; travelling bags [leatherware] are all products that may be made from leather. They are, therefore, identical to the opponent’s goods of leather and imitations of leather (not included in other classes).
The contested leather; imitation leather are raw materials. The mere fact that they are used for the manufacture of leather goods is not sufficient in itself to show that the goods are similar, as their natures and purposes are very different, and their relevant public and distribution channels are also often different (see, to that effect, judgment of 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw materials are, in general, intended for use in industry rather than for direct purchase by the end user. These goods are, therefore, dissimilar to the opponent’s goods.
Class 25
Clothing; footwear; headgear are identically included in both lists of goods.
Contested goods and earlier EUTM No 8 310 534
Class 14
Jewellery; precious metals; precious stones, chronometric instruments are identically included in both lists of goods.
The contested watches are types of time-measuring devices and, as such, they are contained in, and are identical to, the opponent’s broader category of horological instruments.
The contested precious jewels belong to the opponent’s broader category of precious stones; they are, therefore, identical.
The contested cases for watches are ancillary articles for the presentation or storage of watches, which are included in the broad category of the opponent’s horological instruments. These goods usually have the same commercial origins and the same distribution channels. Moreover, they target the same public. Therefore, they are similar.
Class 18
The contested goods in this class have already been found to be identical to those protected by earlier EUTM No 2 844 264, with the exception of leather; imitation leather. However, these contested goods are identically covered by earlier EUTM No 8 310 534.
- 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 are directed at both the public at large and professional public.
The degree of attention is considered to vary from average to higher than average, since the selection of jewellery and precious stones usually involves careful consideration with regard to price, quality, etc. Leather is purchased by manufacturers, who also tend to pay a higher degree of attention, since the selection of the right raw material is very important for the manufacturing process.
The signs
1) EUTM No 2 844 264 TORO 2) EUTM No 8 310 534 | TOR |
Earlier trade marks | 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 Czech- and Slovak-speaking parts of the relevant public, for which the verbal elements of the signs lack any meaning.
The contested sign comprises the verbal element ‘TOR’, while earlier mark 1) comprises the verbal element ‘TORO’. Neither element has any meaning in the relevant territory and their distinctiveness is average. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Visually, the signs coincide in three letters, ‘TOR’ and differ in the final letter, ‘O’, of the earlier sign. The contested sign is included in its entirety in the earlier mark. Since the signs do not contain any other elements that could influence consumers’ visual perception, and as consumers tend to focus on the first parts of word marks, the differing letter at the end of the earlier sign is not sufficient to fully offset the commonalities between the signs and they must, therefore, be considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TOR’, present identically in both signs, and differs in the additional letter, ‘O’, at the end of the earlier mark. Since the earlier mark contains all of the contested sign’s letters in the same order, and any aural difference is found only at the end of the earlier mark, it must be concluded that the signs are aurally similar to an average degree.
With regard to earlier mark 2), the above conclusions drawn in relation to the lack of meaning of the word elements ‘TORO’ and ‘TOR’ in the relevant territory also apply here. However, in this case, the earlier mark comprises a black stylised image of a bull, the word ‘TORO’ in fanciful upper case letters and, underneath those two elements, the word ‘OSBORNE’ in smaller, standard, upper case letters. The depiction of the bull and the word ‘TORO’ are the visually eye-catching elements of the mark, given their position and size. Furthermore, both the figurative and verbal elements are fanciful, which confers on the sign an average degree of distinctiveness.
Visually, the signs coincide in three letters, ‘TOR’, while they differ in the additional seven-letter word element, ‘OSBORNE’, which is neither dominant nor negligible, in the fanciful typeface of the word ‘TORO’ and in the figurative element of the bull. Therefore, the similarity between the word elements, that is, ‘TORO’ and ‘TOR’, found above is offset by the earlier sign’s figurative element and its additional word element.
Therefore, the signs are visually dissimilar.
Aurally, the contested sign’s three-letter verbal element, ‘TOR’, is included in the earlier mark. However, the earlier mark also includes an additional seven-letter word element. Therefore, the similarities between the three letters that the signs have in common are offset to a certain degree by the differing elements, as these make the earlier sign longer and also change its intonation and rhythm. Overall, the signs are similar to a low degree.
Conceptually, while the public in the relevant territory will perceive one of the elements of the earlier sign as referring to a bull and will also perceive the word ‘Osborne’ as an inherently distinctive family name, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
The signs lack conceptual similarity for the Czech- and Slovak-speaking parts of the public. Had the Opposition Division performed a detailed analysis of the parts of the relevant territory where the word elements ‘TORO’ and ‘TOR’ have meanings (e.g. Spain and Italy, where ‘toro’ means ‘bull’, or Germany, where ‘tor’ means ‘gate, or goal in a sporting context’, or Hungary, where it means ‘a wake after a funeral’), the conclusions drawn on the concept conveyed by the earlier sign would not have been different, since the word element as it is understood in Spain or Italy would only reinforce the concept of the figurative element, which has no counterpart in the contested sign. The same applies to the German- and Hungarian-speaking parts of the public, for which the contested sign would convey a concept completely different from that of the earlier sign. Generally, differences in the meanings of the signs’ word elements can only increase the degree of dissimilarity between them.
For the rest of the relevant public, the signs differ conceptually at the very least in the concept conveyed by the depiction of the bull.
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 marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
- Global assessment, other arguments and conclusion
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).
The goods are identical or similar in terms of the visual and aural similarities between the contested sign and earlier mark 1). They differ only in one additional letter placed at the end of the earlier sign, which will have little impact on consumers’ perception, in particular since they would perceive both signs as meaningless.
Considering all the above, there is a likelihood of confusion between the contested sign and the opponent’s European Union trade mark registration mark No 2 844 264 on the part of the Czech- and Slovakian-speaking parts of the public. As stated 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, and there is no need to analyse the remaining part of the public.
Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 2 844 264. It follows that the contested trade mark must be rejected for all the contested goods found to be identical to those covered by that earlier mark, namely leather bags; work bags; evening bags; casual bags; beach bags; shoulder bags; travelling bags [leatherware]; leather credit card wallets; wallets; purses in Class 18 and clothing; footwear; headgear in Class 25.
However, the signs are visually dissimilar and there is a low degree of aural similarity between the contested sign and earlier mark 2). This is sufficiently offset by the significant visual differences and also by the fact that the concept of a bull in the earlier sign is not found in the contested sign. In addition, the differences between these signs are strengthened by the fact that in parts of the relevant territory their similar word elements have different meanings.
Therefore, with regard to the contested sign and the opponent’s European Union trade mark registration No 8 310 518, the Opposition Division finds a likelihood of confusion neither on the part of the Czech- and Slovak-speaking parts of the public nor on the part of the remaining part of the public, for the reasons explained above.
Therefore, the opposition must be rejected for the remaining 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. 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 shall 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
Marianna KONDÁS | Ferenc GAZDA | Solveiga BIEZA |
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.