OPPOSITION No B 2 475 013

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 22/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 475 013 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. European Union trade mark application No 13 310 503 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 European Union trade mark application No 13 310 503 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) 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 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 28/07/2014, R1998/2013-‘TIFANY/TIFFANY&CO’ and Decision of 09/07/2008, 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 lowly 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 DRUCK
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 DRUCK’.

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 finds that, contrary to the opinion of the applicant, this meaning does not impair the inherent distinctiveness of the term in relation to the goods and services in question which are 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 24/07/2014, 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.

The concept of a squirrel in the earlier mark is distinctive in relation to the goods and services and the element ‘DRUCK’ of the contested sign has no meaning in Italian and is therefore also distinctive

As stated in Decision of 24/07/2014, 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 forms the first element of 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 as well as the word ‘DRUCK’ of the contested sign.

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 similar to an average degree as they coincide in the verbal element ‘CORTINA’ which is the dominant element of the earlier mark and that which will have the greatest impact on the consumer and in the first element of the contested sign on which the consumer will focus his attention.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CORTINA’, present identically in both signs. The pronunciation differs in the sound of the word ‘DRUCK’ of the contested sign. Thus the signs are similar to an average degree.

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 element of the earlier sign, namely ‘CORTINA’ has a stronger impact on the consumer than the figurative element of the earlier sign. ‘DRUCK’ of the contested sign has no meaning in Italian. 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 aurally similar to an average degree and conceptually highly similar as they coincide in the verbal element ‘CORTINA’, the first 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.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

The differences between the signs lie in the stylization and slanted angle of the lettering and the device of a squirrel in the earlier mark and the word ‘DRUCK’ of the contested sign. The verbal component of the earlier mark, ‘CORTINA’ has a stronger impact on the consumer than its figurative components and the consumer will focus on the first word ‘CORTINA’ of the contested sign. The word ‘DRUCK’ of the contested sign has no meaning which would aid in the conceptual distinction between the marks.

It has to be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the case at hand, the fact that the dominant verbal element, ‘CORTINA’ of the earlier mark identically coincides with the first word of the contested sign may lead consumers to legitimately believe that the contested trade mark is a brand variation of the earlier sign.

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 degree of similarity of the marks, there is a likelihood of confusion, on the part of relevant public even for the lowly similar 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 the 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) 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

Gueorgui IVANOV

Deirdre QUINN

Vita VORONECKAITĖ

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.

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.