OPPOSITION No B 2 474 826

Comune Di Cortina D'ampezzo, Corso Italia 33, 32043 Cortina D'ampezzo BL, Italy (opponent), represented by Bugnion S.P.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative)

a g a i n s t

Koenig & Bauer AG, Friedrich-Koenig-Str. 4, 97080 Würzburg, Germany (applicant).

On 22/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 474 826 is upheld for all the contested goods and services, namely:

Class 16: Printed matter, in particular newspapers or parts of newspapers, periodicals or parts of periodicals, flyers or supplements; flyers or supplements, being parts in or for newspapers or periodicals.

Class 35: Dissemination of advertisements, in particular leaflets, prospectuses, printed matter, samples.

Class 40: Printing, production of print products, in particular newspapers or periodicals.

2. Community trade mark application No 13 310 321 is rejected for all the contested goods and services. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 310 321 namely against all the goods and services in Classes 16, 35 and 40. The opposition is based on, inter alia, Italian trade mark registration No 1 470 184. The opponent invoked Article 8(1) (b)  CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Italian trade mark registration No 1 470 184.

1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 35: Advertising; business management; business administration; office functions.

The contested goods and services are the following:

Class 16: Printed matter, in particular newspapers or parts of newspapers, periodicals or parts of periodicals, flyers or supplements; flyers or supplements, being parts in or for newspapers or periodicals.

Class 35: Dissemination of advertisements, in particular leaflets, prospectuses, printed matter, samples.

Class 40: Printing, production of print products, in particular newspapers or periodicals.

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 ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 16

The contested printed matter, in particular newspapers or parts of newspapers, periodicals or parts of periodicals, flyers or supplements are identical to printed matter in Class 16 of the earlier mark, printed matter being identically contained in both lists and taking into consideration the explanation of the term ‘in particular’ above.

The contested flyers or supplements, being parts in or for newspapers or periodicals are included in the broad category printed matter of the earlier mark. These goods are thus identical.

Contested services in Class 35

The contested dissemination of advertisements, in particular leaflets, prospectuses, printed matter, samples are included in the broad category advertising in Class 35 of the earlier sign. Thus these services are identical.

Contested services in Class 40

The contested printing, production of print products, in particular newspapers or periodicals are lowly similar to printed matter of the earlier mark as these goods and services can be offered by the same companies to the same public. They can also be in competition with each other, as the public may choose either to buy ready-made products in Class 16 or to order these services in Class 40 to obtain the desired goods. (See in this regard Decision of 28 July 2014, R1998/2013-‘TIFANY/TIFFANY&CO et al’ and Decision of 9 July 2008, R1343/2007-‘EDIS/EDEIS’).

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 the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

	CORTINA
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 figurative mark consisting of the word ‘CORTINA’ in stylized writing where the initial letter ‘c’ has the device of a squirrel on top of it.

The contested sign is the word mark, ‘CORTINA’.

The marks have no elements that could be considered clearly more distinctive than other elements. Although the element ‘Cortina’ in the marks refers to a well-known town ‘Cortina d'Ampezzo’ in the Italian Alps, which is a popular winter sport resort (as well as to a curtain), the Office is of the opinion that, contrary to the opinion of the applicant, this meaning does not impair the distinctiveness of the term in relation to the goods and services in question which will be unlikely to be associated with the winter sport resort as it has not been established that it has a tradition of the production of the goods and services in Classes 16, 35 and 40. See in this regard Decision of 24 July 2014, R0044/2014-4-‘CORTINA’.

Furthermore, the word ‘CORTINA’ with the meaning of ‘curtain’ is of average distinctiveness as it has no meaning in relation to the goods and services at hand.

As stated in Decision of 24 July 2014, R0044/2014-4, ‘CORTINA’ is the most dominant element of earlier Italian trade mark registration No 1 470 184.

Visually, the signs coincide in the verbal element ‘CORTINA ‘which is the dominant element of the earlier trade mark and which makes up the contested sign. However, they differ in the stylization and slanted angle of the lettering of the earlier sign and the device of a squirrel in this mark.

However, 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 visually highly similar as they coincide in the verbal element ‘CORTINA’ which is the only element of the contested sign and the dominant element of the earlier mark and that which will have the greatest impact on the consumer.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CORTINA’, present identically in both signs as the only verbal element and forming a distinctive word. Therefore, the signs are aurally identical.

Conceptually, the public in the relevant territory will understand the verbal component ‘CORTINA’ of both signs as ‘curtain’ and as the commonly used name for the well-known town ‘Cortina d'Ampezzo’ in the Italian Alps. They differ in the concept of a squirrel in the earlier mark. However, the verbal component of the signs, namely ‘CORTINA’ in which the marks coincide has a stronger impact on the consumer than the figurative element of the earlier sign. Thus the signs are conceptually highly similar.

As the signs have been found similar in all three aspects 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 identical and lowly similar to those of the earlier mark.

The marks have been found to be visually and conceptually highly similar and phonetically identical as they coincide in the verbal element ‘CORTINA’, the only element of the contested sign and the dominant element of the earlier mark. This element is distinctive in relation to the goods and services at hand.

The differences between the signs namely the stylization and slanted angle of the lettering and the device of a squirrel in the earlier mark are not sufficient to distinguish between the marks as the verbal component of the earlier mark, ‘CORTINA’ has a stronger impact on the consumer than the aforementioned figurative components.

Taking into account all the relevant factors of the case, it is concluded that, in accordance with the principle of interdependence between trade marks and goods or services (according to which a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods or services, and vice versa, see judgment of 29/09/1998, C 39/97, ‘Canon’), given the high degree of similarity of the marks, there is a likelihood of confusion, on the part of relevant public even for the lowly similar goods and services.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 470 184. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier Italian trade mark registration No 1 470 184 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights 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) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Deirdre QUINN

Deirdre QUINN

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, 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.

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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.