OPPOSITION No B 2 473 919

Dante.cz, s.r.o., U Učiliště 1, 707 00 Ostrava, Kunčice, Czech Republic (opponent), represented by Vynalez, s.r.o., Vinohradska 17, 120 00 Praha, Czech Republic (professional representative)

a g a i n s t

"С М С Текстил" ООД, "Коматевско шосе" № 73Л, 4004 Пловдив, Bulgaria (applicant), represented by Lusia Kesova, P.O. Box 123, 4003 Plovdiv, Bulgaria (professional representative).

On 13/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 473 919 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 104 203 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 104 203. The opposition is based on, inter alia, Czech Republic trade mark registration No 343 715. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK – Parallel Decision Limiting the Goods and Services for which Registration is sought

The contested application was subject to a further opposition, namely Opposition No B 2 486 200. This opposition ended in the partial rejection of the contested application for part of the goods and services for which registration was sought, namely some of the goods in Class 24 and all the goods in Class 25. This decision has become final and the opponent was asked if it maintained the opposition. The opponent confirmed that the opposition was maintained.

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 Czech Republic trade mark registration No 343 715.

1. The goods and services

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

Class 24: Fabrics and textile goods, not included in other classes; bed and table covers; fabrics; curtains; window curtains; table linen; soft furnishings; bedspreads; blankets; duvet covers; bed and table linen; quilted down and feather blankets; blankets of hollow fibers; fustian; brocade; travel blankets; towels; damask; drugette; curtain holders and drapes of textile materials; Espar, Etamin (curtain); Frieze; gauze as fabric; silk; cloth handkerchiefs; jute fabric; canvas embroidery and textile tapestries; chintz (fabric); ensigns of textile materials; textile banners; bathroom textiles(except clothing); crepe; mattress canvas; moleskin; fabrics for mosquito nets; furniture coverings of textile materials; fabrics for footwear; gross buckram; waxed tablecloths; blankets; felt; fabric lining; rubberized fabrics; decorative pillow covers; portiers (curtains); furniture coverings made of synthetic materials; bed covers; duvet for folding toilets covers; protective pillow covers; sheets of paper; household linen; table linen; embroidered linen; textile banners; burlap; rayon; ramie; shroud; washing gloves; sleeping bags (inserts – bedding); shower curtains of textile or plastic; tablecloths; ticking; taffeta; textile wallpapers; nonwoven fabrics; jute fabrics; chenille fabrics; textile lining; fabric for textile use; hemp fabrics; fabrics imitating leather; fabric for upholstery; fabric adhesive in hot; sisal fabrics; fiberglass fabrics for textile use; knitwear; towels; clothes for glass; textile or plastic curtains; zephyr; jersey; hygienic flannels.

Class 27: Carpets, wallpapers and other products in this class; tapestries (except textile); floor coverings; wall hangings (except textile); linoleum; carpet pads; mats; anti-slip mats; reed mats; bathroom rugs; floor mats at the door.

Class 35: Internet shop (e-shop) with clothes, blankets, linens, tablecloths, fabrics, wallpapers, toys, interior assemblies, carpets, adhesive decorations and other household articles; mediation in trade and business services with fabrics, decorations, textile materials, toys and home accessories; window dressing; modeling (services of models) for advertising and sales promotion of clothing and fashion accessories; services in the field of graphic design for advertising purposes; purchase of goods for resale, and this decorative, arranging a textile material; wholesale and retail sale of those goods in the classes 24 and 27; the sale of products in the classes 24 and 27 as well as via the Internet; marketing; procurement and mediation service in promotion, advertising, business and office work; accounting; business administration and office work; market research in connection with these services for other companies and customers; distribution of leaflets; paper printed information for advertising purposes; accounting services; commercial consulting services; advertising activities; providing assistance in business operation including mediation in business and related personnel matters; inspection; management; development of statistics; consultancy in business management and economics; consulting services in choice of employment; organizing exhibitions and fairs for advertising and business purposes; auctions and sales; rental of office machines and equipment; distribution of goods for advertising purposes; performing administrative work using computer technology; mediation of purchase and sale of computer equipment (hardware and software); copying or reproduction of documents, papers; preparation and execution of tax returns; rental of advertising space; rental of photocopying machines; audit; providing advertising for the purpose of entrepreneurs presentation; rental of vending machines.

The contested goods and services are the following:

Class 24: Industrial fabrics.

Class 35: Advertising, marketing and promotional services; commercial trading and consumer information services, namely services relating to the wholesaling and retailing of textiles and clothing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods and services 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 services.

As a preliminary remark, it is to be noted that according to Rule 2(4) EUTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

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 24

The contested industrial fabrics are included in the broad category of the opponent’s fabrics. Therefore, they are identical.

Contested services in Class 35

The contested marketing services are identically contained in both lists of services and the contested advertising services are fully covered by the opponent’s advertising activities. Finally, the contested promotional services are included in the broad category of the opponent’s advertising activities. Therefore, all these services are identical.

The contested commercial trading, namely services relating to the wholesaling and retailing of textiles is contained in the opponent’s list of services as the synonymous term wholesale and retail sale of those goods in the class 24. Therefore, these services are identical.

The contested commercial trading, namely services relating to the wholesaling and retailing of clothing are considered to be similar to the opponent’s wholesale and retail sale of those goods in the classes 24 and 27. The services under comparison have the same nature since both relate to retail and wholesale services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use.

The contested consumer information services, namely services relating to the wholesaling and retailing of textiles and clothing are considered to be similar to the opponent’s wholesale and retail sale of those goods in the classes 24 and 27. The contested services consist of providing information to consumers regarding wholesale and retail services whereas the opponent provides wholesale and retail services, and it is likely, therefore, that the provider of such services will also provide consumer information about those services. Therefore, whilst some of the goods differ between the two lists (Classes 27 and 25), the services will likely come from the same provider and target the same end users via similar distribution channels.

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 and services found to be identical or similar are directed at professionals such at business owners and operators. The degree of attention may vary from average to high depending on the value of the goods and frequency of their acquisition (for example the wholesale purchase of clothing and textile may be less expensive and more frequent than the contracting of advertising services).

3. The signs

Dante záclony
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark consisting of the words ‘DANTE’ and ‘ZÁCLONY’.

The contested sign is a figurative mark consisting of (from top to bottom) a square in different shades of blue and containing two bent white lines, which is surrounded by a grey frame, the verbal elements ‘VIA DANTE’ and the much smaller verbal elements ‘HOME CONCEPT’.

‘DANTE’ in both signs will be understood by a part of the relevant public as referring to Durante degli Alighieri a famous Italian poet of the late Middle Ages, although another part may see no meaning.

The word ‘ZÁCLONY’ of the earlier mark will be associated with ‘curtains’, however, the earlier mark as a whole has no meaningful expression. Nevertheless, bearing in mind that the relevant goods are textile items and the services include retail of textile items, it is considered that this element is non-distinctive for these goods and services, namely those goods in Class 24 which are either curtains or could include curtains (such as fabrics and textile goods, not included in other classes) and wholesale and retail sale of those goods in the class 24 in Class 35. The relevant public understands the meaning of that element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the signs at issue for these goods and services. It is, however, of normal distinctiveness for the other goods and services.

‘VIA’ and ‘HOME CONCEPT’ of the contested sign will have no meaning.

The contested sign has no elements that could be considered clearly more distinctive than other elements.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The figurative element, due to its size, and the verbal elements ‘VIA’ and ‘DANTE’, due to their size and positioning, are the co-dominant elements in the contested sign.

Visually, the signs coincide in the verbal element ‘DANTE’ which is the first element in the earlier mark and part of the co-dominant element of the contested sign. They differ however, in all the other elements described above.

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).

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the word ‘DANTE’ present identically in both signs and which is distinctive in both. The pronunciation differs in the sound of the other verbal elements, ‘ZÁCLONY’, ‘VIA’ and ‘HOME CONCEPT’.

Therefore, the signs are similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘DANTE’ included in both signs, will be associated with a historical person by a part of the public. To that extent, the signs are conceptually similar to an average degree.

However, for the part of the public which does not see this shared concept then as the earlier mark has a concept, curtains, whilst the other sign lacks any meaning, then the signs are not conceptually similar.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services 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

The contested goods and services are partly identical and partly similar to the opponent’s goods and services.

The signs coincide in that the signs share the verbal element ‘DANTE’, leading to visual, aural and, for part of the relevant public, conceptual similarities. Furthermore, this element is the most distinctive element at least for some of the goods and services of the earlier mark, and is part of the co-dominant element of the contested sign.

The signs differ aurally and visually in the additional verbal elements of the signs and visually in the figurative element of the contested sign.

Furthermore, the signs differ visually and aurally in the first part of the contested sign, as this sign has verbal and figurative elements that precede the element that the signs have in common. Since the public reads from left to right (and from top to bottom), consumers generally tend to focus on the first part of a sign when encountering a trade mark. Therefore, the part placed at the left of the sign (the initial part) is the one that first catches the attention of the reader. However, it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of signs must take account of the overall impression created by those signs, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, § 70).

In the present case, the Opposition Division must, therefore, take into consideration that the shared verbal element is the first and most distinctive element for a part of the goods and services of the earlier mark and the co-dominant element of the contested sign where it plays an independent distinctive role, and cannot limit its assessment to the first part of the contested sign.

Furthermore, consumers do not generally encounter conflicting signs simultaneously. They are more likely, when encountering a sign, to compare it with their recollection of signs already known for the relevant area of goods. However, consumers do not clearly recollect every detail of signs. The present sign and an imperfect recollection of another sign are the basis on which consumers evaluate whether or not signs are the same or similar (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

A likelihood of confusion (including a likelihood of association) 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.

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 well founded on the basis of the opponent’s Czech Republic trade mark registration.

It follows from the above that the contested trade mark must be rejected in its entirety.

As the earlier Czech Republic trade mark registration No 343 715 leads to the success of the opposition and to the rejection of the contested trade mark in its entirety, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T342/02, 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

Vita VORONECKAITĖ

Ric WASLEY

Begoña URIARTE VALIENTE

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.