OPPOSITION No B 2 539 131

Counts of Castell GmbH, Griestal 18, 87733, Markt Rettenbach, Germany (opponent), represented by Stolmár & Partner Patentanwälte Partg MBB, Blumenstr. 17, 80331, München, Germany (professional representative)

a g a i n s t

Jose Antonio Molla Coves, Partida Algoda Poligono 1 nº127, 03296, Elche, Spain (applicant), represented by Abelman Consultants, Calle Viera y Clavijo, 22 1ºext., 35002, Las Palmas de Gran Canarias, Spain (professional representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 539 131 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 750 005 for the figurative mark , namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 13 446 836 for the word mark ‘CASTELL’. 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.

a) The goods

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

Class 18: Fine leather goods made from leather or imitations of leather for the field of quality foodstuffs, delicatessen, fish farming, and gastronomy and gourmet products, namely bags with covers, chain mesh purses, tool bags of leather, empty, parasols, umbrellas, sun shades, umbrella covers, bags for campers, laces (leather -), leather thread, trimmings of leather for furniture, moleskin (imitations of leather), pouches and bags (envelopes, small bags) of leather for packaging, bags with covers of textile.

After a partial rejection of the contested application with final decision of 14/07/2016 in Opposition No 2 522 749 the contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols; saddlery, whips and animal apparel; leather for furniture; imitation leather.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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 assumed to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

CASTELL
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 given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The contested sign is a figurative mark which consists of the stylised word ‘Castellanisimos’.

The earlier mark, ‘CASTELL’ will be understood by the relevant public in the Spanish territory as ‘castle’ either because this word is used as such (for example in Catalonia) or because is rather similar to the Spanish word ‘castillo’. It cannot be excluded that that meaning will be perceived also in other languages for example Italian or English as it also rather similar to the equivalent national words ‘castello’, ‘castle’ respectively. The Spanish-speaking public can also perceive the earlier mark ‘CASTELL’ as a surname. For the remaining part of the public, it has no meaning. ‘CASTELL’ is distinctive as has no relation with the relevant goods.

The element ‘Castellanisimos’ of the contested sign has no meaning for the relevant public. However, it cannot be excluded that at least part of the Spanish public will be perceived as a superlative of the word ‘CASTELLANO’ which means ‘native of Castilla’, a region of Spain, since one of the ways to make the superlative in Spanish is by adding the suffix ‘isimo’. This element as has no relation with the relevant goods.

The stylisation of the contested sign is decorative.

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

The opponent argues that the overall visual impression of a word element is determined more by the beginning of the word then by the ending. That circumstance arises, inter alia, from the fact that the public reads from left to right, so that it perceives the beginnings of words first and pays more attention to them than to the other word elements.

In word signs, it is true that the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Nevertheless, the concept ‘beginning of the sign’ is undetermined, as there is no particular indication of what forms the beginning, what is the end or even if there is or is not a middle part of the sign. Again, this perception mostly depends on the circumstances of the case (length of sign, syllabic distribution, use of typeface, etc.) and not on a set rule. It could even be that a sign is perceived as having a short beginning and ending and a proportionally much larger middle or central part.

Consequently, depending on the circumstances, the rule of the relevance of the beginning of the sign could have less weight to the benefit of a more relevant central part.

As it is usually the beginning of a sign that catches consumers’ attention, where signs only differ in their endings, this difference is often insufficient to exclude similarity.

However, this is not a fixed rule and the outcome depends on the circumstances of the case. Moreover, this rule only applies when the sign contains a verbal element (which would explain reading from left to right) and when this verbal element is not very short (otherwise the sign will be perceived immediately in its entirety).

Visually and aurally, the signs have a different length, indeed the earlier mark is made up by seven letters, whereas the contested sign is made up by fifteen letters. They coincide in the letters ‘C-A-S-T-E-L-L’. However, they differ in the letters ‘A-N-I-S-I-M-O-S’ of the contested sign and, visually, in the stylisation of the contested sign.

The General Court has held that since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them, but they cannot, for that reason alone, be regarded as visually similar.

Therefore, the signs are similar to a low degree.

Conceptually, for part of the public neither of the signs has a meaning for the public in the relevant territory and since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For the remaining part of the public, as the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

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 normal.

e) Global assessment, other arguments and conclusion

The goods are assumed to be identical. The degree of attention of the relevant public is average. The distinctiveness of the earlier mark is normal.

The marks are visually and aurally similar to a low degree. In particular, they coincide in some letters, namely the letters ‘CASTELL-’.

However, the relevance of said coincidence is limited as the length of the signs is rather different, being the opponent’s mark made of seven letters and the contested sign of fifteen letters, more of the double. Furthermore, the letters ‘CASTELL’ have no an independent distinctive role in the contested sign being integrated part of the element ‘CASTELLANISIMOS’. Therefore, the differences in the contested sign are not likely to be overlooked or overheard and will catch the attention of the consumers.

Moreover, the signs share no conceptual similarities and for part of the public the signs are not similar.

Having regard to the above, the Opposition Division considers that there is no risk for the marks in conflict to be confused, both in cases they are perceived as conceptually not similar or devoid of semantic content.

Therefore, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

Francesca CANGERI

María Clara IBÁÑEZ FIORILLO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.