OPPOSITION No B 2 486 200

António de Almeida & Filhos - Têxteis, S.A., Rua Nossa Senhora da Ajuda, 193, 4815 257 Moreira de Cónegos, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (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 25/08/2015, the Opposition Division takes the following

DECISION:

1. Opposition decision No B 2 486 200 notified to the parties on 01/12/2015 is hereby revoked.

2. Opposition No B 2 486 200 is partially upheld, namely for the following contested goods:

Class 24: Fabrics; Bed sheets; Felt cloth; Bed sheets; Textile fabrics in the piece; Fabric curtains; Curtains of textile material; Woollen fabric; Viscose textiles; streamers of textile; Vapour permeable plastic textile; Linings [textile]; Waterproof textile fabrics; Waterproofed textile piece goods; Composite textile materials; Textile covers for duvets; Fabrics; Furnishing fabrics in the piece; Woven fabrics for cushions; Curtains of textile material; Synthetic textile piece goods; Household textile articles; Fabric on the roll; Household textile articles; Kitchen linen; Textiles for interior decorating; Woven fabrics for furniture.

Class 25: Headgear; Clothing.

3. European Union trade mark application No 13 104 203 is rejected for all the above goods. It may proceed for the remaining goods and services.

4. Each party bears its own costs.

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 European Union trade mark registration No 3 133 204. The opponent invoked Article 8(1)(b) EUTMR.

DECISION ON THE REVOCATION – ARTICLE 80 EUTMR

According to Article 80(1) EUTMR, where the Office has made an entry in the Register or taken a decision that contains an obvious error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

In the case at hand, the decision contains an obvious procedural error attributable to the Office, namely that whilst the contested vapour permeable plastic textile was compared in the decision and found to be identical, it did not appear in the decision dictum as being one of the goods upheld by the decision.

The parties were informed of this error on 04/05/2016. In accordance with Article 80 EUTMR, the Office gave a deadline to the parties to submit any observations.

The parties did not furnish any comments in reply.

Therefore, the decision notified on 01/12/2015 is hereby revoked and replaced with the present decision.

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.

1. The goods and services

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

Class 24: Quilts, bed sheets, eiderdown covers, pillow cases, bed blankets; bath towels, beach towels; table linen, place mats; dish towels, oven cloths and mitts; curtains; textiles for upholstery and sofas.

Class 25: Towelling robes, dressing gowns, bath slippers, aprons.

Class 27: Bath mats.

The contested goods and services are the following:

Class 24: Fabrics; Industrial fabrics; Bed sheets; Felt cloth; Bed sheets; Textile fabrics in the piece; Fabric curtains; Curtains of textile material; Woollen fabric; Viscose textiles; streamers of textile; Vapour permeable plastic textile; Linings [textile]; Waterproof textile fabrics; Waterproofed textile piece goods; Composite textile materials; Textile covers for duvets; Fabrics; Furnishing fabrics in the piece; Woven fabrics for cushions; Curtains of textile material; Synthetic textile piece goods; Household textile articles; Fabric on the roll; Household textile articles; Kitchen linen; Textiles for interior decorating; Woven fabrics for furniture.

Class 25: Headgear; Clothing.

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.

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

Bed sheets; bed sheets are identically contained in both lists of goods.

Curtains of textile material; curtains of textile material; fabric curtains are included in the broad category of the opponent’s curtains. Therefore, they are considered identical.

The contested household textile articles; household textile articles include, as a broader category, the opponent’s dish towels, oven cloths and mitts. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested kitchen linen includes, as a broader category, the opponent’s dish towels, oven cloths and mitts. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested woven fabrics for furniture overlap with the opponent’s textiles for upholstery and sofas. This is because not all but some woven fabric for furniture is intended for sofas and not all furniture is sofas or features upholstery and/or woven fabrics. These goods are therefore considered identical.

The contested textile covers for duvets overlap with the opponent’s eiderdown covers (as some but not all duvets contain eiderdown). Therefore, they are considered identical.

The contested synthetic textile piece goods; fabric on the roll; woollen fabric; viscose textiles; felt cloth; streamers of textile; textiles for interior decorating; furnishing fabrics in the piece; waterproof textile fabrics; waterproofed textile piece goods overlap with the opponent’s textiles for upholstery and sofas. This is because all the contested goods can be, but are not always, intended for use in upholstery and sofas. These goods are therefore identical.

The contested textile fabrics in the piece; fabrics; fabrics; vapour permeable plastic textile; composite textile materials overlap with the opponent’s textiles for upholstery and sofas. This is because not all fabrics, but indeed some, are intended for upholstery and sofas. These goods are therefore identical.

The contested woven fabrics for cushions are similar to the opponent’s textiles for upholstery and sofas in Class 24. This is because these goods have the same nature, distribution channels, producers and relevant public.

The contested linings [textile] are textiles used to form an inner layer in clothing, hats, luggage, curtains, handbags and similar items. The opponent’s textiles for upholstery and sofas in Class 24 are textiles that are not specifically intended for items of clothing but can, nevertheless, be expected to target the same relevant public and be distributed through the same channels, namely textile shops, and which clearly have the same nature. Therefore, these goods are similar.

Industrial fabrics are materials primarily intended for industrial applications, while all the opponent’s goods in Classes 24, 25 and 27 are intended for personal use, mainly in the home. These goods can be expected to have different producers, to target different publics, not to have the same distribution channels and to be neither complementary nor in competition. Consequently, these goods are dissimilar.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s aprons. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested headgear is similar to the opponent’s towelling robes in Class 25. This is because they target the same public and may have the same nature, producers and distribution channels.

Contested services in Class 35

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. Therefore, advertising is generally dissimilar to the goods or services being advertised. The same applies to the comparison of advertising services with goods that can be used as media for disseminating advertising, such as DVDs, software, printed matter, flyers and catalogues.

The contested advertising, marketing and promotional services do not coincide in enough of the relevant criteria for a finding of similarity, as they differ in nature, providers/producers, purpose and method of use, and they are neither in competition with nor complementary to any of the opponent’s goods in Classes 24, 25 and 27.

The contested commercial trading and consumer information services, namely services relating to the wholesaling and retailing of textiles and clothing are not retail services as such but rather information and commercial trading services, which in turn relate to retailing of textiles, etc. Therefore, these services are dissimilar to the opponent’s goods in Classes 24, 25 and 27, as they can be expected to differ in providers/producers, nature and purpose, and they are neither in competition nor complementary.

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 found to be identical or similar are directed at the public at large, and the degree of attention is considered to be average.

3. 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 bearing in mind 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 Polish-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the words ‘home’ in large standard lower case letters and appearing on the horizontal axis and ‘CONCEPT’ in small standard upper case letters and appearing on the vertical axis immediately after the letter ‘e’ of the first word.

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’.

‘HOME CONCEPT’, present in both signs, will have no meaning for the relevant public. Likewise, ‘VIA’, present in the contested sign, will also have no meaning.

‘DANTE’, present in the contested sign, 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.

None of the elements present in both signs has any meaning in relation to the relevant goods found identical or similar and, therefore, they are considered of normal distinctiveness.

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 are similar to the extent that they coincide in the verbal elements ‘HOME’ and ‘CONCEPT’. However, they differ in the additional figurative element and the verbal elements of the contested sign, ‘VIA DANTE’. Finally, the signs differ in the stylisation of their verbal elements.

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal elements ‘HOME’ and ‘CONCEPT’, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the verbal elements ‘VIA’ and ‘DANTE’ in the contested sign.

Therefore, the signs are similar to an above average degree.

Conceptually, for a part of the relevant Polish-speaking public the contested sign will be understood as referring to an Italian poet whilst the earlier mark has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

However, for another part of the relevant Polish-speaking public, neither of the signs has a meaning. Since a conceptual comparison is not possible, 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.

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 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, partly similar and partly dissimilar to the opponent’s goods.

The signs coincide in that the verbal elements of the earlier mark are contained in their entirety in the contested sign, leading to visual and aural similarities. The signs differ aurally and visually in the additional verbal elements of the contested sign and visually in the figurative element of the contested sign and the stylisation of the verbal elements of both signs.

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 elements 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 marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (see 16/05/2007, T‑158/05, ‘Altrek’, § 70).

In the present case, the Opposition Division must, therefore, take into consideration that the verbal element of the earlier mark is entirely reproduced in the contested mark and cannot limit its assessment to the first part of the contested sign. Furthermore, the distinctiveness of the earlier mark is normal for the relevant Polish-speaking public.

The merely average degree of attention of the public in question cannot, in the present case, suffice to rule out a likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking public and therefore the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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

Vita VORONECKAITĖ

Ric WASLEY

Volker Timo MENSING

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. 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 800 has been paid.