OPPOSITION No B 2 904 582

Nueva Dimension Textil, S.L., c/ Santo Domingo de Guzmán, 2. apdo. 158, 47400 Medina Del Campo, Spain (opponent), represented by GT. De Propiedad Industrial, S.L., c/ Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative)

a g a i n s t

Karatzi Industrial and Hotelier Enterprises Societe Anonyme, Melidochori, Monofatsi, 71601 Irakleio, Kritis, Greece (applicant), represented by Αγγελικα, Γκουσκου, ΣΚΟΥΦΑ5-7, 10673 ΑΘΗΝΑ, Greece (professional representative).

On 16/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 904 582 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 383 317 for the figurative mark , namely against all the goods in Class 16. The opposition is based on Spanish trade mark application No 3 642 968 for the figurative mark . 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.

1. The goods

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

Class 16: Packing materials, plastic.

The contested goods are the following:

Class 16: String dispensers for use in packaging; films for wrapping foodstuffs; plastic film for packaging; gummed cloth for stationery purposes; wrapping foils for books; food wrapping plastic film; plastic film for wrapping; adhesive plastic film for packaging; adhesive foils stationery; polythene films for wrapping or packaging; adhesive plastic film for wrapping; food wrapping plastic film for household use; sheets of reclaimed cellulose for wrapping; adhesive plastic film used for mounting images; gift wrap; food wrappers; plastic wrap; gift wrapping foil; plastic gift wrap; gift wrap paper; decorative wrapping paper; bows for decorating packaging; plastic envelopes; maps made of flexible plastics; plastic materials for packaging; bags of plastics for lining refuse bins; bags made of plastics for packaging; bags of bubble plastics for packaging; garbage bags of paper or of plastics; handles made of plastics for paint brushes; packaging materials of plastic for sandwiches; air bubble plastics for packaging; plastic transparencies; plastic bags for packaging ice; plastic shopping bags; plastic sandwich bags; plastics for modelling; general purpose plastic bags; plastic bubble packs for wrapping or packaging; sheets for wrapping made of plastic material; plastic bags for household use; plastic disposable diaper bags; tamper evident tapes of plastic; plastic cling film, extensible, for palletization; garbage bags of plastics [for household use]; cling film; sticky tape; binding strips [bookbinding]; elastic bands for offices; typewriter ribbons; bookbinding strips; paper ribbons; self-adhesive tapes for stationery use; typewriter correction ribbons; correcting tapes [office requisites]; bookbinding material; packaging materials.

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.

Plastic materials for packaging are identically contained in both lists of goods (including synonyms).

The contested packaging materials include, as a broader category, the opponent’s packing materials, plastic. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested films for wrapping foodstuffs; plastic film for packaging; wrapping foils for books; food wrapping plastic film; plastic film for wrapping; adhesive plastic film for packaging; polythene films for wrapping or packaging; adhesive plastic film for wrapping; food wrapping plastic film for household use; gift wrap; food wrappers; plastic wrap; gift wrapping foil; plastic gift wrap; bags of plastics for lining refuse bins; bags made of plastics for packaging; bags of bubble plastics for packaging; garbage bags of plastics; packaging materials of plastic for sandwiches; air bubble plastics for packaging; plastic bags for packaging ice; plastic shopping bags; plastic sandwich bags; general purpose plastic bags; plastic bubble packs for wrapping or packaging; sheets for wrapping made of plastic material; plastic bags for household use; plastic disposable diaper bags; tamper evident tapes of plastic; plastic cling film, extensible, for palletization; garbage bags of plastics [for household use]; cling film are included in, or overlap with, the broad category of the opponent’s packing materials, plastic. Therefore, they are identical.

The contested sheets of reclaimed cellulose for wrapping; gift wrap paper; decorative wrapping paper; bows for decorating packaging; paper ribbons are highly similar to the opponent’s packing materials, plastic because they can have the same purpose (i.e. packing and/or wrapping). They can also be in competition. In addition, they can have the same distribution channels and end users. Moreover, they can be produced by the same undertakings.

The contested garbage bags of paper are similar to the opponent’s packing materials, plastic. These goods have a similar purpose and are in competition, given that the opponent’s goods can include garbage bags of plastic. In addition, they can target the same relevant public (e.g. the catering sector) and are sold in the same outlets.

The contested string dispensers for use in packaging are similar to a low degree to the opponent’s packing materials, plastic. These goods have the same distribution channels and are produced by the same undertakings. In addition, they target the same public.

The contested gummed cloth for stationery purposes; sticky tape; self-adhesive tapes for stationery use; adhesive foils stationery; plastic envelopes; plastic transparencies; elastic bands for offices; typewriter ribbons; typewriter correction ribbons; correcting tapes [office requisites] fall into the broad category of stationery products. They are similar to a low degree to the opponent’s packing materials, plastic, as they have the same distribution channels and target the same relevant public.

The contested maps made of flexible plastics; handles made of plastics for paint brushes; adhesive plastic film used for mounting images; plastics for modelling; bookbinding strips; binding strips [bookbinding]; bookbinding material and the opponent’s packing materials, plastic are dissimilar. These contested goods are artists’ materials or printed matter. These goods and the opponent’s goods do not have the same nature, purpose or method of use. They are neither in competition nor complementary. In addition, they do not have the same distribution channels and are not produced by the same undertakings.

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 to various degrees are directed at the public at large and professionals.

The degree of attention will be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a figurative mark consisting of the word ‘SOLOFILM’ in upper case letters. ‘SOLO’ is in black and ‘FILM’ is in red. This verbal element is depicted against a green cone. The contested sign is a figurative mark consisting of the word ‘SiloFilm’ at the top, and a green curved line at the bottom. ‘SiloFilm’ is in title case letters. ‘Silo’ is depicted in green while ‘Film’ is in black. Above the word ‘Film’ is a small registered trade mark symbol, ®.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts.

In the present case, as the verbal elements in both signs are in different colours and, in the case of the contested sign, are in title case letters, a de facto separation is created between the words.

In the context of the relevant goods, the element ‘FILM’, present identically in both signs, will be perceived as referring to plastic film used for packaging or wrapping (‘film plástico’ or ‘papel film’ in Spanish). Given the goods in question, this element is non-distinctive for both the opponent’s goods and some of the contested goods. On the other hand, in relation to some of the contested goods (e.g. plastic envelopes), this element has an average degree of distinctiveness.

The word ‘SOLO’ means ‘lone’ (definition extracted from WordReference online dictionary on 17/04/2018 at https://www.wordreference.com/es/en/translation.asp?spen=solo). Therefore, the verbal element of the earlier mark will be perceived by the relevant public as a meaningful, non-distinctive expression because it indicates the nature or composition of the goods, namely that they are or contain a single plastic film (or only a plastic film).

‘Silo’ is meaningful from the relevant public’s perspective, as the word ‘silo’ exists in Spanish as well as in English; it means ‘a tall round metal tower on a farm, in which cereals are stored’. Nevertheless, the Opposition Division considers that, given the goods in question, at least part of the relevant public will not perceive this particular meaning in the word ‘Silo’ and instead will consider it a fanciful element. Whether it is perceived as meaningful or not, this element has an average degree of distinctiveness, since, even when understood, it is not related to the relevant goods.

The green cone in the earlier sign has no meaning in relation to the opponent’s goods and has an average degree of distinctiveness.

The contested sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The figurative element of the contested sign will be perceived as fanciful and has an average degree of distinctiveness.

Neither of the signs has any element that can be considered more dominant than other elements.

The signs have weak elements in common. It should be kept in mind that, the more distinctive the coinciding element is, the higher the degree of similarity will be in each aspect of the comparison (visual, aural and conceptual). Finding that the coinciding element has a limited degree of distinctiveness will lower the degree of similarity between the signs. If the only coinciding element is non-distinctive, the degree of similarity at all levels of the comparison will be low or – depending on the impact of the differing elements – there will be no similarity at all. In the present case, the coinciding element, ‘FILM’, is non-distinctive (in relation to the opponent’s goods and some of the contested goods), but the marks contain other distinctive elements.

Visually, the signs coincide in the string of letters ‘S*LOFILM’. They differ in their second letters, ‘I’ in the contested sign and ‘O’ in the earlier mark, and in their figurative elements and typefaces.

As mentioned above, ‘SOLOFILM’ is non-distinctive and the element ‘Film’ in the contested sign is also non-distinctive in relation to some of the relevant goods; this tends to reduce the degree of similarity between the signs.

Given the foregoing, the signs are visually similar to, at most, a low degree. The signs are similar to a low degree in relation to goods for which ‘film’ is distinctive, whereas, in relation to goods for which ‘film’ is non-distinctive, the signs are visually dissimilar.

Aurally, the signs coincide in the sound of the letters ‘S*LOFILM’ and differ in the sound of their second letters, namely ‘I’ in the contested sign and ‘O’ in the earlier mark.

The reasoning in the visual comparison applies equally to the aural comparison. The element ‘SOLOFILM’ is non-distinctive and the element ‘Film’ in the contested sign is also non-distinctive for some of the contested goods and, to that extent, the signs have to be considered aurally similar to, at most, a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In the earlier mark, concepts are conveyed by the green cone and, to a very limited extent, by the non-distinctive element ‘SOLOFILM’. Concepts are conveyed in the contested sign by the element ‘Silo’ (at least for a part of the public) and ‘Film’ (in relation to goods for which this element is distinctive).

Given the foregoing, the signs are conceptually dissimilar in the scenario where ‘Silo’ is associated with a meaning and/or when ‘Film’ has some distinctive character. However, in the scenario where ‘Silo’ is perceived as a fanciful element and ‘Film’ is not distinctive in the contested sign, since one of the signs will not be associated with any relevant meaning, 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the non-distinctive element ‘SOLOFILM’.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the signs are visually and aurally similar to, at most, a low degree are and conceptually dissimilar or not similar, depending on the degree of distinctiveness of the element ‘FILM’ and whether or not the word ‘Silo’ in the contested sign will be perceived as meaningful.

The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods.

As regards dissimilar goods, as similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

In relation to the remaining goods, the determination of the capability of a trade mark to act as a business identifier in trade is indispensable for the assessment of likelihood of confusion. In fact, the Court of Justice has established that trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (04/02/2014, T‑604/11 & T‑292/12, Magnext, EU:T:2014:56, § 34). It follows, ad argumentum e contrario, that trade marks, or their elements, with a low degree of or no distinctive character have a low degree of or no protection.

In the present case, the earlier mark has an average degree of distinctive character as a whole. However, the verbal element of the sign – where the commonalities with the contested sign are found – is non-distinctive because it describes the nature or composition of the goods, while the figurative element, namely the green cone, is distinctive. Furthermore, apart from the coinciding element, ‘FILM’, which is non-distinctive for some of the contested goods, the contested sign contains distinctive elements, namely the word ‘Silo’ and the figurative element.

Taking into account the lack of conceptual similarity between the conflicting signs in relation to some of the relevant goods and the, at most, low degree of visual and aural similarity between them, there is no likelihood of confusion, even for the contested goods that are identical to the opponent’s goods and even taking into account the average degree attention paid by the relevant consumer. The fact that the signs coincide in an element that is not distinctive in the earlier mark and is distinctive in the contested sign for only some of the goods that are similar to the opponent’s goods is not sufficient for the signs to create similar overall impressions. Therefore, the consumer would directly confuse the marks or would assume that the goods covered are from the same undertaking or economically linked undertakings (19/12/2017, R 1143/2017-4, plus1 / PLUS (fig.) § 32, by analogy).

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Zuzanna STOJKOWICZ

Birgit FILTENBORG

Julie, Marie-Charlotte HAMEL

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.