Decision on Opposition No B 2 772 138 page: 4 of 6
Also, 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. In the current case the earlier mark has a verbal element
in the beginning of the mark that is completely different from the contested sign.
Therefore, the signs are visually similar to a low 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
‛Ma**ei’, present identically in both signs. The pronunciation differs in the sound of
the letters ‘PALAZZO’ and ‘**FF**’ of the earlier mark and ‘**zz**’ of the contested
sign. These additional three syllables in the beginning of the earlier sign (PA-LA-ZZO)
and the difference in the sound between the middle letters of the second verbal
element of the earlier mark and the contested sign will not go unnoticed by the
Therefore, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For part of the public (Italian-speaking), as specified
above, the signs will be associated with a dissimilar meaning and for this part of the
public the signs are conceptually not similar. For another part of the public (e.g.
German and Swedish-speaking) only the earlier mark will have a meaning. Since one
of the signs will not be associated with any meaning, the signs are not conceptually
similar for this part of the public. For the rest who does not perceive any meaning in
the signs, the conceptual aspect does not influence the assessment of the similarity
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.
d) 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
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous factors 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 of
art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors